The federal trademark law that bars registration of trademarks that are “immoral” or “scandalous” violates the First Amendment, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit has ruled. The decision shows the power of the U.S. Supreme Court’s decision earlier this year, Matal v. Tam, in which the Court unanimously invalidated the federal trademark provision barring registration of disparaging marks.
The controversy arose when the Trademark Trial and Appeal Board refused to allow clothing-brand owner Erik Brunetti to register the phrase “FUCT.” The board’s reasoning was that “FUCT” is defined in the Urban Dictionary as the past tense of “FUCK” – a vulgar and scandalous word.
Brunetti argued on appeal to the Federal Circuit that the word “FUCT” is not scandalous. The Federal Circuit disagreed, finding that the word “FUCT” is generally understood as another way to describe the past tense of the word “FUCK.”
However, the Federal Circuit explained that the federal trademark law did not pass review under the First Amendment in In Re Brunetti.
The appeals court explained that the law was clearly a content-based restriction on speech and, thus, subject to the highest form of judicial review known as strict scrutiny. The appeals court reasoned that even if the provision is deemed to be purely commercial speech, the provision still violates the First Amendment because the government “does not have a substantial purpose in protecting the public form scandalousness and profanities.”
The government analogized to the Supreme Court’s decision in F.C.C. v. Pacifica Foundation (1978), where the Court narrowly upheld the ability of the federal government to fine radio stations who broadcast indecent speech during daytime hours. The Federal Circuit rejected this analogy, pointing out that Pacifica involved the protection of minors, not the protection of the general public. Furthermore, the appeals court wrote that unlike a radio broadcast, “a trademark is not foisted upon listeners by virtue of its being registered.”
The government also argued that the ban on registering immoral or scandalous marks could be interpreted to apply only to obscenity – an unprotected form of speech. The appeals court also rejected this argument, writing that “not all scandalous or immoral marks are obscene.”
The Federal Circuit’s decision is an important one that limits the ability of the government to limit speech because of its perceived offensiveness.