Giving a Fuct: Federal Circuit Opens Floodgates for Immoral Trademarks

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WASHINGTON (CN) – Cover your ears, Grandma. The Federal Circuit struck down a law Friday that bars trademark hopefuls from registering material considered to be “immoral” or “scandalous.”

“There are words and images that we do not wish to be confronted with, not as art, nor in the marketplace,” U.S. Circuit Judge Kimberly Moore wrote for a three-judge panel. “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.”

Erik Brunetti brought the underlying challenge when the Patent and Trademark Office blocked his bid in 2011 to register the mark “fuct” for a clothing brand of the same name that he founded in 1990.

As the examining attorney for the trademark office quickly deduced, however, “fuct” is the phonetic equivalent of another, more vulgar word whose utterance offends the scandalous-marks prohibition laid out in Section 2(a) of the Lanham Act.

The Trademark Trial and Appeal Board ruled against Brunetti as well, but he fared better Friday before the Federal Circuit.

“Timing and the stars were aligned to have this issue addressed,” said John Sommer, the retailer’s attorney.

Indeed the “fuct” challenge may have gone differently were it not for the Supreme Court’s ruling this past June, striking down a disparagement clause that had frustrated Asian-American rocker Simon Tam from trademarking the name of his band, The Slants.

Anticipating the case’s applicability, Irvine, Calif.-based Sommer noted that he even sat in at oral arguments when the Federal Circuit heard the Tam appeal en banc.

That helped him prepare for his own day in court with Brunetti.

The Federal Circuit requested additional briefings in Brunetti’s case after the Tam decision came down, and Moore’s 42-page opinion Friday cites the precedent heavily.

Moore first found the trademark program is not a government subsidy, saying such logic would allow the government to censor speech on the basis of content for any program it operates. Likewise, Moore found, the government does not gain more authority to regulate trademarks simply because it publishes all of the marks in a government database.

“The government fails to articulate a reason why the government’s listing of registered trademarks in a database creates a limited public forum,” Moore wrote. “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.”

But ultimately, Moore’s opinion rests on the finding that the government does not have a substantial interest in protecting the public from profane trademarks, unlike the interests it has claimed to justify actions like restricting vulgar radio broadcasts.

“A trademark is not foisted upon listeners by virtue of its being registered,” Moore wrote. “Nor does registration make a scandalous mark more accessible to children. Absent any concerns that trademark registration invades a substantial privacy interest in an intolerable manner, the government’s interest amounts to protecting everyone, including adults, from scandalous content. But even when ‘many adults themselves would find the material highly offensive,’ adults have a First Amendment right to view and hear speech that is profane and scandalous.”

In an 8-page concurring opinion, U.S. Circuit Judge Timothy Dyk said it might have been possible to save some aspects of the challenged provision.

While keeping in place the trademark board’s rules against obscenity, Dyk said the court could have more narrowly tailored the law to cut only out its bar on immoral and scandalous marks.

“Where the regulation of speech is concerned, the Supreme Court has a long history of narrowing the scope of similarly worded statutes to cover only obscene speech,” Dyk wrote.

Sommer said his focus during the case was not just on allowing Brunetti to trademark his clothing line, but also on the many people who use controversial trademarks for causes that seek to affect social change.

“I was always focused on the broader implications of this decision,” Sommer said.

The Patent and Trademark Office declined to comment on the case, citing department policy.

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