Trademarks

Bar on Registering 'Immoral or Scandalous' Trademarks Violates First Amendment

So a Federal Circuit panel held today, answering a question that the Supreme Court's Slants case left open.

|The Volokh Conspiracy |

In this year's Matal v. Tam (2017)—also known as the Slants case—the Supreme Court struck down the federal statute that barred the Patent & Trademark Office from registering trademarks that were supposedly "disparaging" (e.g., perceived by some as racist). Such a law, the Court concluded, was unconstitutionally viewpoint-based; and even though the law didn't ban use of such marks, but only denied certain important federal trademark law benefits to such marks, the government couldn't discriminate based on viewpoint in allotting such broadly available benefits.

But the same statute also bans registration of "immoral or scandalous" marks. Historically, this phrase has been read to cover allegedly blasphemous words, but recently it has generally been read as focused on vulgar words (usually ones referring to sex or excretion):

Because the scandalousness determination is made in the context of contemporary attitudes, the concept of what is actually immoral or scandalous changes over time. Early cases often, but not always, focused on religious words or symbols. See, e.g., In re Riverbank Canning Co., 95 F.2d 327, 329 (CCPA 1938) (MADONNA for wine); Ex parte Martha Maid Mfg. Co., 37 U.S.P.Q. 156 (Comm'r Pat. 1938) (QUEEN MARY for women's underwear); Ex Parte Summit Brass & Bronze Works, Inc., 59 U.S.P.Q. 22 (Comm'r Pat. 1943)(AGNUS DEI for safes); In re P. J. Valckenberg, Gmbh, 122 U.S.P.Q. 334 (T.T.A.B. 1959) (MADONNA for wine); In re Reemtsma Cigarettenfab-riken G.M.B.H., 122 U.S.P.Q. 339 (T.T.A.B. 1959) (SENUSSI (a Muslim sect that forbids smoking) for cigarettes); In re Sociedade Agricola E. Comerical Dos Vinhos Messias, S.A.R.L., 159 U.S.P.Q. 275 (T.T.A.B. 1968) (MESSIAS for wine and brandy). In later cases, the PTO rejected a wider variety of marks as scandalous. See, e.g., Runsdorf, 171 U.S.P.Q. at 443 (BUBBY TRAP for brassieres); McGinley, 660 F.2d at 482 (mark consisting of "a photograph of a nude man and woman kissing and embracing in a manner appearing to expose the male genitalia" for a swingers newsletter); In re Tinseltown, Inc., 212 U.S.P.Q. 863 (T.T.A.B. 1981)(BULLSHIT on handbags, purses, and other personal accessories); Grey-hound Corp. v. Both Worlds, Inc., 6 U.S.P.Q.2d 1635 (T.T.A.B. 1988) (mark depicting a defecating dog); Mavety, 33 F.3d 1367 (BLACK TAIL for adult entertainment magazines).

The prohibition on "immoral or scandalous" marks is clearly content-based—it turns on what words the mark contains, or what concepts it refers to—but it's not obviously viewpoint-based (though it might be enforced this way). Does that save it from invalidation, on the theory that government speech restrictions are generally unconstitutional if they're content-based, but government denials of benefits are fine if they're content-based but viewpoint-neutral?

No, the Federal Circuit said today in In re Brunetti, which involved an attempt to register the trademark FUCT. Judge Moore's majority opinion concluded that limits on trademark registration should be treated similarly to limits on speech; in particular, it rejected the analogy between the registration program and various "limited public forums" that the government can open up for private speech but in a content-based (though viewpoint-neutral) way:

The government argues that the federal trademark registration program is a limited public forum, subjecting § 2(a)'s content-based restriction on marks comprising immoral or scandalous subject matter to a less demanding degree of scrutiny…. [But t]he Supreme Court has found the existence of a limited public forum only when the government restricts speech on its own property [such as military bases, prisons, airport terminals, sidewalks outside post offices, public utility poles, and public schools and universities]…..

While some of the Supreme Court's limited public forum cases have involved forums that exist "more in a metaphysical than in a spatial or geographic sense," these forums have nonetheless been tethered to government properties. In Rosenberger v. Rector, [for instance,] the Supreme Court considered a University's distribution of funds through a Student Activities Fund ("SAF") intended to "support a broad range of extracurricular student activities that 'are related to the educational purpose of the University.'" The Court concluded the SAF was a limited public forum that "effects a sweeping restriction on student thought and student inquiry in the context of University sponsored publications." Although the SAF was "metaphysical"—in that it concerned use of the University's funds rather than the University's facilities—the effect of its restrictions on speech were felt on the government's property, the University….

Because trademarks are by definition used in commerce, the trademark registration program bears no resemblance to these limited public forums. The speech that flows from trademark registration is not tethered to a public school, federal workplace, or any other government property. A principal feature of trademarks is that they help "consumers identify goods and services that they wish to purchase, as well as those they want to avoid." "These marks make up part of the expression of everyday life, as with the names of entertainment groups, broadcast networks, designer clothing, newspapers, automobiles, candy bars, toys, and so on."

By their very purpose, trademarks exist to convey messages throughout commerce. It is difficult to analogize the Nike swoosh or the Nike JUST DO IT mark located on a Nike shirt in a Nike store as somehow a government created limited public forum. The registration and use of registered trademarks simply does not fit within the rubric of public or limited public forum cases. "[T]he forum analysis requires consideration not only of whether government property has been opened to the public, but also of the nature and purpose of the property at issue." …

That registered marks also appear on the government's principal register does not transform trademark registration into a limited public forum. The government does not open the principal register to any exchange of ideas—it is ancillary to trademark registration. The principal register is simply a database identifying the marks approved for use in commerce…. If the government can constitutionally restrain the expression of private speech in commerce because such speech is identified in a government database, so too could the government restrain speech occurring on private land or in connection with privately-owned vehicles, simply because those private properties are listed in a database….

The government fails to articulate a reason why the government's listing of registered trademarks in a database creates a limited public forum. And if it did then every government registration program including titles to land, registration of cars, registration of wills or estates, copyrights, even marriage licenses could similarly implicate a limited public forum. We thus conclude that government registration of trademarks does not create a limited public forum in which the government can more freely restrict speech.

The majority also rejected the view that the government has more power here because trademarks are generally used in commercial advertising; restrictions on allegedly offensive speech, the Supreme Court has held before, are no more valid for commercial advertising than for other speech. (Misleading commercial advertising is more regulable than other misleading speech, so the limitation on registering deceptive marks might remain constitutional.) In the process, the majority also observed that the exclusion of "scandalous or immoral" marks was independently unconstitutional because it has been so inconsistently applied (and I suspect such inconsistency is likely inevitable with a vague phrase like that):

Nearly identical marks have been approved by one examining attorney and rejected as scandalous or immoral by another. The PTO registered the mark FUGLY for use on clothing, but refused registration for use on alcoholic beverages. Compare Reg. No. 5,135,615, with Appl. No. 78,866,347. See also COCAINE, Appl. No. 78,829,207 (rejected), COCAINE, Reg. No. 1,340,874 (accepted). The PTO registered NO BS! BRASS, Reg. No. Reg. No. 5,053,827, for entertainment services but rejected NO BS ZONE, Appl. No. 76,626,390, for internet training. NO $#!+, Appl. No. 85,855,449, was rejected, but $#*! MY DAD SAYS, Reg. No. 4,142,745, was allowed. See also ROLL TURD, Appl. No. 86,448,988 (rejected), TURD HERDERS, Reg. No. 5,180,286 (registered). Although the language in these marks is offensive, we cannot discern any pattern indicating when the incorporation of an offensive term into a mark will serve as a bar to registration and when it will not.

One commentator has written that, of the forty marks containing the acronym MILF for which written records were available as of 2011, twenty marks received an office action refusing registration based on § 2(a), while twenty did not. Anne Gilson LaLonde & Jerome Gilson, Trademarks Laid Bare: Marks That May Be Scandalous or Immoral, 101 Trademark Rep. 1476, 1478–82 (2011). It is difficult to understand what distinguished the refused marks, which included GOT MILF (clothing), MILF MANIA (adult online services), MILF SEEKER (adult entertainment services), and FROM SOCCER MOM TO MILF (self-help books for women), from the marks which were registered, including DIARY OF A MILF (adult online services), BACKROOM MILF (adult online services), FAT MILF (sandwich), and MILF NEXT DOOR (adult online services)

Judge Dyk concurred in the judgment, but held only that (1) the exclusion posed serious First Amendment problems, and (2) these problems should be avoided by reading "immoral" and "scandalous" as limited to speech that falls within the First Amendment exception for obscenity (i.e., hardcore pornography). This would be a very narrow reading indeed, especially as applied to the words, short phrases, or very simple graphics that compose the typical trademark.

Thanks to John Ross for the pointer.

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11 responses to “Bar on Registering 'Immoral or Scandalous' Trademarks Violates First Amendment

  1. How does all of this comport with Originalism – as it relates to trademark registration as well as free speech?

    1. Not very well, I would think, especially when you take into account just how much narrowing has been done to ‘obscene’.

      1. Arguably the federal court got this one wrong, because it’s hard to imagine a “scandalous” trademark that doesn’t damage a reputation; accordingly, many such marks should be denied pursuant to the legal principles developed in America’s leading criminal “satire” case. Surely no one here would dare to defend the “First Amendment dissent” of a single, isolated judge in that case? See the documentation at:

        https://raphaelgolbtrial.wordpress.com/

      2. “Originalism” is itself arguably a loaded term, unless it’s taken to mean the original intention of the founders that the constitution be reinterpreted from one generation to the next to keep up with changing social conditions. Chief Judge Jonathan Lippman of the New York Court of Appeals took a swipe at the idea in our nation’s leading criminal “satire” case, when he stated that the criminalizing of inappropriately deadpan parody was an “atavistic” assault on the First Amendment. Moreover, First Amendment jurisprudence has largely evolved over the past century, as Professor Arthur Hayes suggests in a thought-provoking article at:

        https://forward.com/opinion/385050/.

        On the other hand, changes in the law don’t always mark an “advance” or “evolution.” The founders were well versed in the works of Montesquieu, who wrote that satire is never criminalized in democracies because it gives the people an opportunity to vent. Scurrilous writings of all sorts were part of the common discourse of the 18th century, as can be seen in many a hoax of Benjamin Franklin that would today constitute criminal speech in New York. Today, a court has essentially held that venting is okay, as long as it’s done in a trademark. The courts, however, have yet to apply this basic principle to certain criminal-law contexts where it is particularly relevant.

        1. >>”Originalism” is itself arguably a loaded term, unless it’s taken to mean the original intention of the founders that the constitution be reinterpreted from one generation to the next to keep up with changing social conditions.

          1. Remember that “neither good faith nor truth is a defense,” an assertion of fact explicitly made by the trial court in our nation’s leading criminal “satire” case, politely ignored by the appellate courts, and with which virtually the entire legal community in this country apparently agrees.

    2. Trademarks are a Common Law construction with no direct Constitutional implications (apart from implications related to the Commerce Clause, which allows federal regulation of Trademarks). There is thus no “originalism” to be had on this issue.

      1. This is not exactly correct, and even less so when analyzing the case before the court.Trademark law did originate in common law, but this case had to do specifically with the United States Patent and Trademark Office granting federal trademark protection to trademarks based on the requirements set forth in the Lanham Act. The Lanham Act denies federal registration, and the benefits that go with it which exceed the scope of common law, if a mark is immoral or scandalous. Apparently if the government is going to grant added protections to property rights (which trademarks are, i.e. intellectual property), it cannot deny those protections to the property rights it finds immoral or scandalous based on first amendment concerns.

        I agree though, it is hard to put this in an originalists argument because trademark law was not well developed by the 18th century, although trademarks were already considered property rights. Although I am not sure if the phrase “intellectual property” had yet been coined. It’d be interesting to dig a bit into the history of trademark law. I think Guinness or some other brewery were awarded the first property rights to a trademark, but maybe it was the first registered trademark?

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  2. A trademark is a limitation on free speech–it only allows one person to use a particular mark (with exceptions, of course). having a proposed trademark rejected means that anyone can use it. How could that possibly be an infringement of free speech? No one’s saying you can’t call your Asian-influenced burger shop “Gook Burger.” That is not how Trademarks work.

    1. But if Gook Burger was to be a hit, someone else could use the name to glom onto your success.

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