In the wake of the In re Tam decision by the U.S. Supreme Court, on December 15, 2017, the Federal Circuit held that the Lanham Act Section 2(a) prohibition on the registration of immoral and scandalous marks is a content-based restriction on free speech that violates the First Amendment. Adopting the same reasoning that the Supreme Court did in the In re Tam decision, the Federal Circuit held that denying a federal trademark registration based on the nature of a mark is impermissible.
Interestingly, before reaching its conclusion, the court first went through the exercise of applying the test for whether a mark is scandalous or immoral and acknowledged that “[b]ecause the scandalousness determination is made in the context of contemporary attitudes, the concept of what is actually immoral or scandalous changes over time” (Slip Op. p. 3). The court referenced the fact that at “the time of the passage of the Lanham Act, dictionaries defined ‘scandalous’ as ‘shocking to the sense of truth, decency or propriety,’ ‘[g]iving offence to the conscience or moral feelings’ or ‘calling out [for] condemnation.’”
The court ultimately concluded that the mark in question (FUCT for clothing items) did in fact meet the standard – that it was vulgar and therefore scandalous, but that it did not matter because the restriction on the registration of these scandalous marks was immoral and impermissible.
The trademark at issue is vulgar. And the government included an appendix in its briefing to the court which contains numerous highly offensive, even shocking, images and words for which individuals have sought registration. Many of the marks rejected under §2(a)’s bar on immoral or scandalous marks, including the marks discussed in this opinion, are lewd, crass, or even disturbing. We find the use of such marks in commerce discomforting, and are not eager to see a proliferation of such marks in the marketplace. There are, however, a cadre of similarly offensive words and images that have secured copyright registration by the government. There are countless songs with vulgar lyrics, blasphemous images, scandalous books and paintings, all of which are protected under federal law. No doubt many works registered with the Copyright Office offend a substantial composite of the general public. The government has offered no substantial government interest for policing offensive speech in the context of a registration program such as the one at issue in this case.
Slip Op. p. 41. The analogy to copyright protection for scandalous and immoral content is an interesting new angle on this issue. The priority that has been clearly allocated to the First Amendment and free speech when it comes to copyright protection is more established and in many ways easier to relate to for most. While the public may be offended by what others are “saying” (or singing) in written or recorded form, there is a generally accepted, baseline understanding that the First Amendment provides protections for this “speech” that are firmly rooted in the founding principles of this country. To date, however, trademarks have not been viewed as being “speech” in this same way. When the prohibition on the registration of scandalous and immoral marks was first codified in 1905, and in the intervening 112 years since that time, whether this restriction on registration impugned/impacted the right to free speech was not even raised. For over a century, neither the USPTO nor the courts have second-guessed this baseline assumption that trademarks are different in nature than copyrights and have not equated the Lanham Act Section 2(a) provisions regarding immoral or scandalous marks and the right to secure a trademark registration with a content-based restriction on free speech.
The court extended its reliance on this copyright-based analogy to traditional “speech” restriction cases in rejecting the government’s attempt to rely on the FCC v. Pacifica Foundation decision, 438 U.S. 726 (1978), in which the Supreme Court upheld the constitutionality of the FCC’s order determining that George Carlin’s “Filthy Words” monologue was indecent and potentially sanctionable, arguing that there was a material distinction between radio broadcasting (which has “a uniquely pervasive presence in the lives of all Americans” and is uniquely accessible to children, even those too young to read” and which intrudes in the privacy of the home, where the individual’s right to be left alone plainly outweighs the First Amendment rights of the intruder.” Id. at 749) and a trademark use, as “a trademark is not foisted upon listeners by virtue of its being registered.”
There are countless songs with vulgar lyrics, blasphemous images, scandalous books and paintings, all of which are protected under federal law. No doubt many works registered with the Copyright Office offend a substantial composite of the general public. There are words and images that we do not wish to be confronted with, not as art, nor in the marketplace. The First Amendment, however, protects private expression, even private expression which is offensive to a substantial composite of the general public. The government has offered no substantial government interest for policing offensive speech in the context of a registration program such as the one at issue in this case.
Slip Op. p. 42. While the decision in this case is not likely to have a material impact on most brand owners, who typically look to engender goodwill with consumers rather than potentially offend them with their choice of trademarks, it is nonetheless a significant decision when it comes to trademark jurisprudence and the evolution of trademark law in the United States. Ultimately, the decision in this case is not surprising as the Supreme Court’s holding in the In re Tam decision last year clearly set the groundwork for it. However, it is surprising – and perhaps even a bit shocking – that a statute that was enacted and enforced without being questioned as a restriction on free speech for the past 112 years was so soundly discredited.
Cynthia Walden is a Principal in Fish & Richardson’s Boston office, and the firm’s Trademark and Copyright Practice Group Leader. Ms. Walden is well-known for providing insightful and business minded advice to clients on all aspects of brand protection and enforcement...