Section 2(a) of the Trademark Act ("The Lanham Act") prohibits marks to register either on the Principal Register or the Supplemental Register when the mark is determined to be immoral or scandalous. The determination of whether a mark is immoral or scandalous is made in the context of the relevant marketplace for the goods and services and based on contemporary attitudes. The law does not require a viewpoint from a majority of consumers, but instead uses the standard of a "substantial composite of the general public", and this segment of the public must perceive the mark to have a vulgar meaning.
There is little legislative history regarding this provision of the Lanham Act, therefore these types of marks have been interpreted by looking at the ordinary meaning of the proposed terms. An Examining Attorney need only prove the existence of one vulgar meaning to justify refusal on this basis. The Examiner can look for guidance from court cases, Trademark Trial and Appeal Board ("TTAB" or "Board") decisions, dictionary definitions, or newspaper and magazine articles. Whether the Applicant intended the mark to be humorous, and even if it is perceived to be funny is irrelevant. When this issue arises, the Examining Attorney must consult with his or her supervisor to ensure consistency in examination.
At the end of 2017, The United States Court of Appeals for the Federal Circuit ruled that Section 2(a) of the Lanham Act banning immoral and scandalous trademarks violates the First Amendment of the Constitution. See In re Brunetti, 125 USPQ2d 1072 (Fed. Cir. Dec. 15, 2017). This case involved the mark, FUCT for apparel, footwear, accessories and related goods. The Examiner and the Board concluded that the mark was the phonetic equivalent of the term "fucked". Multiple dictionary entries for this term stated it was vulgar. The Applicant asserted that the term FUCT was a coined term for "Friends yoU Can't Trust". The Board was hard pressed to believe that this was the true meaning and intent. The Board viewed the Applicant's website and blog, and observed that the website and the associated products contained strong, explicit, sexual imagery. The TTAB concluded that the term FUCT will be perceived to have negative sexual connotations. The Board affirmed the refusal to register, and the Applicant appealed to the United States Court of Appeals for the Federal Circuit.
The Federal Circuit Court agreed that the term FUCT was vulgar, and that substantial evidence supported the Board's decision that the mark comprised immoral and scandalous matter. However, the Federal Circuit Court held that Section 2(a) (15 U.S.C. §1052(a)) is a restriction of free speech and a violation of the First Amendment, therefore unconstitutional. The TTAB's holding finding the applicant's mark FUCT unregistrable was reversed.
Prior to the Federal Circuit's decision of In re Brunetti, the U.S. Supreme Court heard In re Tam, which affirmed the Federal Circuit Court's decision that the disparagement provision of Section 2(a) of the Lanham Act was unconstitutional. Speech cannot be banned on the ground that it expresses ideas that offend. The government restricts speech based on content when a law applies to speech due to the topic or idea expressed. To survive strict scrutiny the government must prove the restriction furthers a compelling interest, and is narrowly tailored to achieve that interest.
The government's interest in protecting the public from trademarks that are in poor taste is not a compelling interest that justifies suppression of speech. In fact, it's unlikely that the USPTO will be able to prove that the statute is carefully tailored due to the inconsistency at The Trademark Office in registering marks. Nearly identical marks have been registered by one Examining Attorney and refused as immoral and scandalous by another Examining Attorney. Recently, the USPTO has filed a petition for a rehearing en banc. The USPTO is likely to face an uphill battle seeking a reversal of the decision In re Brunetti. If you have questions concerning trademark matters, please feel free to contact our office for a courtesy consultation.