By Bryan K. Wheelock, Principal
In In re Brunetti, [2015-1109] (December 15, 2017), the Federal Circuit reversed the Trademark Trial and Appeal Board, which affirmed the examining attorney’s refusal to register the mark FUCT because it comprises immoral or scandalous matter under 15 U.S.C. § 1052(a).
While the Federal Circuit found substantial evidence supported the Board’s findings and that the Board correctly concluded that the mark comprises immoral or scandalous matter, the Federal Circuit held that the bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech.
After its en banc decision In re Tam, 808 F.3d 1321, 1333–34 & n.4 (Fed. Cir. 2015) — which held that Section 2(a)’s prohibition against registration of disparaging marks is unconstitutional under the First Amendment because it discriminated on the basis of content, message and viewpoint, which the Supreme Court affirmed — the Federal Circuit determined that the prohibition against scandalous marks was similarly unconstitutional.
The government conceded that § 2(a)’s bar on registering immoral or scandalous marks is a content-based restriction on speech, subject to strict scrutiny review. However, the government contended § 2(a)’s content-based bar on registering immoral or scandalous marks does not implicate the First Amendment because trademark registration is either a government subsidy program or limited public forum. The Federal Circuit examined both of these arguments in detail and rejected them.
It seems ridiculous to assert that the First Amendment creates a right to register a trademark, but the Federal Circuit has held otherwise and the Supreme Court agrees. One has to wonder which other of Section 2’s prohibitions are likewise improper restrictions on speech.