In a decision surprising absolutely nobody, on Monday the Supreme Court ruled that the U.S. Patent and Trademark Office (USPTO) could not refuse to register trademarks even if they are  “immoral or scandalous.”  The trademark at issue involved the use of the mark “FUCT [F-U-C-T]” for clothing and merchandise.

The Court held that the First Amendment right to free speech trumps Section 1052(a) of Lanham Act (Section 2(a)), which prohibits the use of “immoral, deceptive, or scandalous matter; or matter which may disparage….”

The Slants, the Washington Redskins and Free Speech vs. Disparaging Trademarks

The Court’s recent decision was merely the final domino to topple in the domino chain reaction that started back in 2010 when Simon Shiao Tam, the lead singer for an Asian rock band attempted to register “The Slants” as the name of the band.  The USPTO rejected The Slants’ application, finding it was disparaging to people of Asian descent.  Tam appealed, and the Federal Circuit Court ultimately held that the USPTO’s refusal to register the trademark violated Tam’s First Amendment right to free speech. The Supreme Court affirmed the Federal Circuit Court’s decision, holding that the disparagement clause of  Section 2(a) “violates the Free Speech Clause of the First Amendment.”

The Supreme Court’s Tam decision effectively rescued the Washington Redskins’ trademarks, which the USPTO was in the process of cancelling as disparaging to Native Americans.

The FUCT Trademark, and the Final Domino

The Slants and Washington Redskins’ trademarks addressed Section 2(a)’s prohibition of disparaging trademarks, but the FUCT trademark attacked Section 2(a)’s prohibition of “immoral or scandalous matter….”  When Erik Brunetti sought to register the mark FUCT for his clothing brand, the USPTO refused to register the mark, finding that “‘FUCT’ is the past tense of the verb ‘fuck,’ a vulgar word, and is therefore scandalous.”  Brunetti appealed, the Federal Circuit agreed that the mark FUCT is vulgar, but followed the Supreme Court’s Slants decision, holding that “the bar in Section 2(a) against immoral or scandalous marks is unconstitutional because it violates the First Amendment.”

Justice Kagan, writing for a 6-3 majority, held that “the Lanham Act’s prohibition of ‘immoral [ ] or scandalous’ trademarks violates the First Amendment.”  The Court noted that historically the USPTO would refuse to register a mark if the mark was “shocking to the sense of truth, decency, or propriety” or “giving offense to the conscience or moral feeling.”  The Court noted and did not disagree with the USPTO’s conclusion that the FUCT mark “flunked the test” and was “a total vulgar.”  However,  Brunetti brought a facial challenge, basically conceding that his mark was vulgar but arguing that the “immoral or scandalous” prohibition violated his First Amendment right to free speech.  The Supreme Court agreed that Section 2(a)’s prohibition of immoral and scandalous marks is unconstitutional.

As I wrote last year, the Court’s decision is likely to spur a race to the bottom, with certain businesses seeking to gain attention and market share via shocking, vulgar and/or scandalous trademarks from the USPTO.

It was only a matter of time.

THE “GOOD OLD DAYS” BEFORE DISPARAGING, VULGAR AND SCANDALOUS TRADEMARKS

For seventy years the United States Patent and Trademark Office (USPTO) refused to register marks that consisted of “immoral, deceptive, or scandalous matter; or matter which may disparage…..” citing § 2(a) of the Lanham Act.

Last June the Supreme Court struck down section 2(a)’s prohibition of disparaging marks and the other shoe just dropped when the Federal Circuit struck down its prohibition of vulgar, immoral or scandalous marks, allowing someone to register the mark FUCT.

The Slants Crush § 2(a)’s Prohibition of Disparaging Marks 

In 2010, Simon Shiao Tam, lead singer of the Oregon based Asian American rock band, sought to disarm the “toxic language and symbols” associated with the term “slants” by registering the mark “THE SLANTS” for the band.  The USPTO found the term disparaging to people of Asian descent and refused to register the mark under § 2(a).  Tam appealed, the Trademark Trial and Appeal (TTTBA) affirmed, Tam appealed, the Federal District Court initially affirmed the TTTBA’s decision, but later decided on its own to grant en banc review and reversed, finding that § 2(a) violated the First Amendment.  The USPTO still refused to register the mark and the Supreme Court granted certiorari.  In June 2017, the Supreme Court affirmed the Federal Circuit Court, holding that the disparagement clause of § 2(a) “violates the Free Speech Clause of the First Amendment.”

The Slants decision effectively rescued the Washington Redskins’ trademarks.  In 2014, the TTTBA decided to cancel the team’s registered trademarks, finding the term “Redskins” disparaging.  The team appealed to District Court, which affirmed the TTTBA’s decision, the team appealed to the Fourth Circuit and while the matter was pending, the Supreme Court issued its Slants decision.  Early this year the Fourth Circuit  reversed and remanded the district court, effectively ordering that the team’s marks be reinstated.

The Federal Circuit Orders USPTO to Register FUCT Mark, Striking Down Section 2(a)’s Prohibition of Vulgar, Immoral and Scandalous Marks 

In 2011, Erik Brunetti sought to register the mark FUCT for his clothing brand. The USPTO refused to register the mark, finding that “ ‘FUCT’ is the past tense of the verb ‘fuck,’ a vulgar word, and is therefore scandalous.”  Brunetti appealed to the TTAB.  The TTAB noted that Brunetti “used the mark in the context of ‘strong, and often explicit, sexual imagery that objectifies women and offers degrading examples of extreme misogyny’” and held the mark was “vulgar and therefore un registerable under section 2(a) of the Lanham Act.”

Brunettti appealed the TTAB decision to the Federal Circuit, which heard the appeal after the Supreme Court issued its Slants decision. In a ruling that rivals a South Park episode for the number of swear words, the Federal Circuit agreed with the TTAB that the mark FUCT is vulgar, but followed the Supreme Court’s Slants decision, holding that “the bar in § 2(a) against immoral or scandalous marks is unconstitutional because it violates the First Amendment.”   The Court rejected the USPTO’s argument, similar to its argument in the Slants case, that trademark registration is a government subsidiary, which allows the government some leeway in regulating speech.  The Court noted that “[t]here are countless songs with vulgar lyrics, blasphemous images, scandalous books and paintings, all of which are protectable under federal [copyright] law” and reversed the TTAB’s holding that the mark FUCT “is unregisterable under section 2(a).”

What’s Next for Vulgar and Scandalous Trademarks?

We are likely to see a race to the bottom. Much like shock jocks Howard Stern and Don Imus seek to increase market share with outlandish speech, some business owners are likely to see some value in garnering attention via shocking, vulgar and/or scandalous trademarks, and the USPTO will have no choice but to register those marks.

Today the Supreme Court agreed to decide an ongoing conflict, pitting a trademark registrant’s First Amendment rights against longstanding law precluding trademark registration of “disparaging” marks.

In This Corner: Trademark Law & the USPTO

Section 2(a) of the Lanham Act, precludes trademark registration of marks that are: immoral, deceptive or scandalous matter; or matter which may disparage …or bring them into contempt or disrepute….” Since World War II, the United States Patent and Trademark Office (USPTO) has relied on Section 2(a) to deny registration to such marks, but in December 2015, for the first time, the legality of Section 2(a) was called into question.

In This Corner: The First Amendment & The Slants

An Asian-American rock band, The Slants, sought to register its name, but the USPTO rejected the name as disparaging. The Slants appealed to a federal district court, which affirmed the USPTO’s decision, but when The Slants appealed to the Federal Circuit, the majority found that Section 2(a) was unconstitutional restraint of free speech under the First Amendment.

The Slants asked the Federal Circuit to order the USPTO to register its trademark, but the court declined. The USPTO issued guidelines, advising trademark applicants that any applications with potentially disparaging marks would be held in limbo until the issue was resolved.  Then the USPTO asked the Supreme Court to decide the issue.

In This Other Corner: The Washington Redskins

Meanwhile in June 2014 the USPTO deregistered the Washington Redskins’ trademark under Section 2(a). The Washington football team appealed, lost in federal district court and appealed to the Fourth Circuit. While that appeal is currently pending, the Washington team has asked the Supreme Court to intercede.

The Judges’ Score Card: Key Issues

The Slants, the Washington team and the Federal Circuit majority basically argue that trademarks equal free speech. They contend that Section 2(a) amounts to viewpoint discrimination and is subject to strict scrutiny  review, Section 2(a) fails to withstand “strict scrutiny” and is therefore unconstitutional. “Strict scrutiny” requires the USPTO to prove that Section 2(a) serves a compelling government interest, that it is narrowly tailored to achieve that interest, and that it is the least restrictive means for achieving that interest.

The USPTO, the two federal district courts, and the Federal Circuit’s dissenting opinion argue that trademarks do not equal free speech, and Section 2(a) is not subject to “strict scrutiny.” They contend that Section 2(a) does not prohibit any speech but instead denies the benefits of registration to private disparaging speech. In short, The Slants and the Washington team are entirely free to call themselves whatever they want, to publicize their names and use their names in commerce, but they are not entitled to the extra benefits conferred by federal trademark registration.

TKO or 12 Rounds?

While today’s grant of certiorari is only the beginning of the first round, recent Court decisions upholding hateful speech in other situations would tend to indicate that USPTO may be punching above its weight class and Section 2(a) might hit the canvas.

INITIAL CALL ON THE FIELD

In June 2014, the U.S. Patent and Trademark Office (USPTO) stripped the Washington Redskins (Washington) of their federal trademarks, finding the term “Redskins” was disparaging under Section 2(a) of the Lanham Act.

REPLAY OFFICIAL CONFIRMS THE CALL

Washington sought an instant replay before the District Court for the Eastern District of Virginia, but that Court affirmed the USPTO’s initial call.  Washington then sought a replay in the Fourth Circuit Court of Appeals, but this week, while that decision was under review, Washington threw a Hail Mary pass, asking the Supreme Court to intercede even before the Fourth Circuit decides Washington’s appeal.

WASHINGTON’S END AROUND

Washington’s unorthodox move is the result of another scrimmage — this one between the USPTO and the Portland dance-rock band, The Slants. As discussed in our prior post,  The Slants, a band comprised of Asian Americans, tried to register their name with the USPTO, but the USPTO refused, citing Section 2(a).  The Slants appealed the USPTO decision, lost at trial, but then won when the Federal Circuit reversed , finding that Section 2(a) was unconstitutional restraint of free speech under the First Amendment.

JOINING A GAME ALREADY IN PROGRESS

Last week the USPTO petitioned the Supreme Court to settle whether Section 2(a) violates the First Amendment. The thrust of the USPTO’s argument is that The Slants (and by extrapolation Washington) have free speech to call themselves whatever they want; the government is not stopping them.  They just aren’t entitled to “federal trademark registration,” i.e., a stamp of approval for their use of “disparaging” names.

So Washington’s latest play is essentially joining The Slants to pile on the USPTO and knock Section 2(a) out of the trademark registration game.

We recently wrote about In re Tam, the Federal Circuit Court’s decision invalidating Section 2(a) of the Lanham Act.  The Court held that Section 2(a), which precludes trademark registration of immoral, deceptive, scandalous or disparaging trademarks, violates the First Amendment.  The Court ruled for The Slants, a Portland-based band comprised of Asian Americans who had sought to trademark their name, but whose trademark application had been rejected by the U.S. Patent and Trademark Office (USPTO)  as “disparaging.”

The Court’s decision could have wider implications, especially with regards to the Washington Redskins’ appeal to regain their trademark, which is pending before the Fourth Circuit, a “sister” court to the Federal District Court. In December, Simon “Young” Tam (the Tam in In re Tam) wrote this blog post sharing his views about media coverage of the case, including the desire of the media (and attorneys) to compare the case to the Redskins’ case and issues surrounding identity politics. It’s definitely worth a read!

The USPTO Strikes Back, Sort of

In response to the In re Tam decision, last week the USPTO decided that it would put trademark applications with Section 2(a) issues in limbo.  The USPTO issued  Examination Guidance 01-16, which advised that “while the constitutionality of these provisions remains in question and subject to potential Supreme Court review” the USPTO will handle trademark applications with section 2(a) problems by issuing an “advisory refusal and suspend action on the application.”

The Slants’ Full Court Press

But The Slants aren’t willing to wait. Yesterday The Slants filed a writ of mandamus petition asking the Federal Circuit Court to order the USPTO to immediately process The Slants’ trademark registration.

The $64,000 question is whether the Federal Circuit Court will grant The Slants’ petition, rather than wait for the issue to percolate up to the Supreme Court. One Court observer  has noted that in recent years the Federal Circuit Court has become more aggressive about issuing such extraordinary relief.

Blog note: Photo updated 3/16/2016