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Federal Circuit Rules Ban on Scandalous and Immoral Trademarks Unconstitutional

On December 15, 2017, the Federal Circuit held that the Lanham Act’s ban on registering scandalous or immoral marks is an unconstitutional restriction of free speech.
January 9, 2018

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By Brendan McDermott

On December 15, 2017, the Federal Circuit held that the Lanham Act’s ban on registering scandalous or immoral marks is an unconstitutional restriction of free speech. The decision reversed a ban on registering a variation of one word that was on the list George Carlin commonly referred to as the Seven Dirty Words in his comedy routines. George Carlin created the comedy routine to challenge the Federal Communication Commission’s Decision to ban certain immoral words from television. This decision by the Federal Circuit would likely receive full support from the comedian.

The case, In re Brunetti, No. 2015-1109, 2017 U.S. App. LEXIS 25336 (Fed. Cir. Dec. 15, 2017), decided the constitutionality of a portion of Lanham Act § 2(a). The statute allowed the United States Patent and Trademark Office (PTO) to refuse to register marks that are immoral and scandalous. The PTO applied a test asking whether a “substantial composite of the general public would find the mark scandalous.” Id. It defined scandalous as “shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience or moral feelings; . . . or calling out for condemnation.” Id. A mark would also qualify as scandalous if it was vulgar, defined as lacking in taste and morally crudev.

The case was not the first free speech challenge to a ban on registration of certain marks. In June of 2017, the Supreme Court decided Matal v. Tam, 137 S. Ct. 1744 (2017). In that case, the Supreme Court weighed in on the constitutionality of another Lanham Act § 2(a) ban on marks that “disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” Id. at 1753. The Court first held that trademarks are private, not government speech. Id. at 1757-61. Importantly, the two plurality opinions by Justice Alito and Justice Kennedy held that the ban on disparaging marks unconstitutionally discriminated based on viewpoint. Id. at 1763 (Alito, J.); id. at 1765 (Kennedy, J.). The Justices relied on a fundamental principle that “[s]peech may not be banned on the ground that it expresses ideas that offend. Id. at 1751 (Alito, J.); id. at 1766 (Kennedy, J.).

In the Brunetti decision, The Federal Circuit had to first determine the scope of the Supreme Court’s decision in Matal v. Tam. The panel found that the decision in Tam did not resolve the constitutionality of other parts of Lanham Act § 2(a). It then determined that the ban on immoral or scandalous marks was a content-based restriction on speech. Accordingly, the provision must pass the exacting strict scrutiny standard requiring the government to prove that the restriction furthers a compelling interest and is narrowly tailored. The Court held the statute did not pass this high standard.

In fact, the government didn’t attempt to argue that the statute did not survive strict scrutiny. Instead, the government argued that the ban did not fall within the First Amendment in the first place because trademark registration is either a government subsidy program or a limited public forum. If registration is a government subsidy, the government would have been allowed to place certain conditions on the grant. Similarly, if the trademark register is a limited public forum, the government could permissibly limit the content. The Court rejected both theories. Relying heavily on the reasoning in Tam, the Court held the trademark register is not akin to a government subsidy because the benefits of registration are not analogous to the grant of funds. The Court also reasoned that the register is not a limited public forum because it is not connected to any government-owned property.

Going forward, this decision by the Federal Circuit will be binding precedent on the PTO. A trademark examiner will no longer be able to refuse to register a mark based on scandalous or immoral content. Of course, the PTO still can refuse to register marks that are merely descriptive or likely to cause confusion with another mark when used in connection with the goods of the applicant.

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