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.

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.