The United States Court of Appeals for the Federal Circuit has ruled that the Section 2(a) bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech. The CAFC therefore reversed the decision of the TTAB (here) that had affirmed the USPTO’s refusal to register the mark FUCT for athletic apparel on the ground that the mark is vulgar and therefore scandalous. In re Brunetti, Appeal No. 2015-1109 (Fed. Cir. December 15, 2017) (Opinion by Circuit Judge Kimberly A. Moore).

Scandalous or Immoral? Section 2(a), in pertinent part, provides that the USPTO may refuse to register a mark that “[c]onsists of or comprises immoral … or scandalous matter.” The USPTO does not distinguish between “immoral” and “scandalous” matter but rather applies the 2(a) bar as a unitary provision (“the immoral or scandalous provision”). In considering this disqualification, the USPTO asks whether “a substantial composite of the general public” would find the mark scandalous, defined as “shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable … giving offense to the conscience or moral feelings; … or calling out for condemnation.” The USPTO may prove scandalousness by proving that a marks is “vulgar.” The determination is made “in the context of contemporary attitudes.”

The TTAB concluded that the mark FUCT is vulgar and therefore scandalous. Dictionary entries for the word “fuck” deemed it “almost universally vulgar.” The Board found that “fuct” is the “phonetic twin” of “fucked,” the past tense of “fuck.” Evidence of applicant’s use of the mark buttressed the Board’s finding of a link between the mark and the word “fuck.” The Board also found that applicant’s assertion that “fuct’ is a coined term for “Friends yoU Can’t Trust” stretched credulity.

The CAFC concluded that substantial evidence supported the Board’s findings and the Board did not err in concluding that the applied-for mark comprises immoral or scandalous matter.

Constitutionality: In In re Tam, the Supreme Court held that the disparagement provision of Section 2(a) was facially unconstitutional because it violates the Free Speech clause of the First Amendment. “It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” Here the government contended that Tam does not resolve the constitutionality issue because the disparagement provision implicated viewpoint discrimination, whereas the immoral or scandalous provision is viewpoint neutral.

The CAFC, putting aside the question regarding viewpoint discrimination, concluded that the immoral or scandalous provision “impermissibly discriminates based on content in violation of the First Amendment.”

The government restricts speech based on content when “a law applies to particular speech because of the topic discussed or the idea or message expressed.” To survive a constitutional challenge, such a law “must withstand strict scrutiny review, which requires that the government ‘prove that the restriction furthers a compelling interest and is narrowly tailored to achieve that interest.'”

The government contended that the immoral or scandalous provision does not implicate the First Amendment because trademark registration is either a government subsidy program or a limited public forum. The CAFC rejected those arguments.

Alternatively, the government asserted, trademarks are commercial speech requiring only the intermediate level of scrutiny of Central Hudson, and under this standard the immoral or scandalous provision is an appropriate content-based restriction tailored to substantial government interests. The CAFC, however, pointed out that trademarks convey a commercial message, but often have an expressive content as well. There is no question that the immoral or scandalous provision targets the expressive component. Therefore, the provision should be subject to strict scrutiny.

In any case, the CAFC concluded, the immoral or scandalous provision is unconstitutional even under the intermediate scrutiny framework. The government does not have a substantial interest in protecting the public from profane and scandalous marks. Nor does the provision advance the government’s asserted interest, since Section 2(a) does not prevent applicants from using their marks. And the inconsistent application of the provision shows that the provision has not been “carefully tailored” to serve the government’s alleged interests.

Finally, the court noted that it must construe statutes narrowly to preserve their constitutionality when possible. However, it found no reasonable definition of the statutory terms “scandalous” and “immoral” that would pass muster. In his concurrence, Judge Dyk proposed that the court narrow the scope of the provision to “obscene” marks in order to preserve the provision’s constitutionality. The majority, however, found no basis for construing “immoral or scandalous” to mean “obscene,” and stated that it could not re-write the statute.

Conclusion: The court held that the immoral or scandalous provision is unconstitutional because it violates the First Amendment, and it therefore reversed the Board’s holding that applicant’s mark is unregistrable under §2(a).

The First Amendment … 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.