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In re Brunetti

Lanham Act Bar on Scandalous or Immoral Marks is Unconstitutional

In re Brunetti, 2017 U.S. App. LEXIS 25336 (Fed. Cir. Dec. 15, 2017) (Dyk (concurring), MOORE, Stoll) (TTAB) (4 of 5 stars)

Fed Cir reverses holding that applied-for “FUCT” mark is unregistrable as scandalous. The Board correctly determined that “FUCT” is vulgar. Per Fox, 702 F.3d 633 (Fed. Cir. 2012), a determination of vulgarity is sufficient to establish scandalousness. The opinion rejects Mr. Brunetti’s arguments for non-vulgarity. The bar on immoral or scandalous marks in § 2(a) of the Lanham Act, however, is unconstitutional under the First Amendment. Citing Tam, 137 S. Ct. 1744 (2017), but finding that case not fully dispositive, the opinion determines that the bar on immoral/scandalous marks is a content-based restriction. It rejects the government’s argument that trademark registration is akin to a government subsidy program, which might permit content-based restrictions. It also rejects the argument that trademark registration is a limited public forum. The opinion reasons that the ban targets “the expressive content of speech,” and thus must receive strict scrutiny, under which test it is undisputedly unconstitutional. But even under the more permissive test of intermediate scrutiny (which would apply if the bar were treated as a regulation of mere commercial speech), the bar is unconstitutional due to the government’s failure to identify a substantial government interest served by the regulation, and the record indicating that the bar was not carefully tailored in either its design or application. Finally, the opinion concludes that there is no “reasonable definition” of the statutory terms scandalous or immoral that would preserve constitutionality.

Concurrence: Judge Dyk thinks a “saving construction” of § 2(a) is possible. He proposes limiting the bar to obscene marks unprotected by the First Amendment. Because there is no suggestion that Mr. Brunetti’s mark is obscene, Judge Dyk agrees with the outcome of the present appeal.

KEYWORDS: FIRST AMENDMENT; FREE SPEECH; TRADEMARK; STRICT SCRUTINY; INTERMEDIATE SCRUTINY