Federal Circuit Takes Away PTO’s Bar of Soap, Ruling Even the Profane Gets Protection

February 2, 2018

The United States Court of Appeals for the Federal Circuit has ruled that profanity can be trademarked and that the provision §1052(a) of the United States Code forbidding the registration of such a trademark is an unconstitutional limitation on the freedom of speech. Section 2(a) prohibits the registration of trademarks that comprise of “immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute . . . .” By doing so, Congress has placed a substantial limitation on trademark owners who wished to brand their products in a less conventional way.
The case before the Federal Circuit, In re Brunetti, involved the attempts of a clothes retailer to register the brand “Fuct,” which he founded in 1990. The brand is known for its sexual, and sometimes misogynistic, clothing. When reviewing Mr. Brunetti’s application, the Patent and Trademark Office (PTO) refused to register the mark. The Trademark Trial and Appeal Board (TTAB) affirmed the decision. The examining attorney of the PTO denied the registration because the attorney found “Fuct” to be the past-tense of the F-word, making it ineligible for registration under §2(a). The word, pronounced the same way as the curse word, was considered too vulgar for government trademark protection.
The Federal Circuit, however, reversed the decision. Although the Court found that the trademark did qualify as “immoral” or “scandalous,” the Court determined that this could not bar the mark’s registration because it was an unconstitutional limitation on the freedom of speech.

In making its decision that §2(a) did not survive either strict scrutiny or intermediate scrutiny, the Court noted, “There are words and images that we do not wish to be confronted with, not as art, nor in the marketplace. The First Amendment, however, protects private expression, even private expression which is offensive to a substantial composite of the general public.”

The Court did not find the government’s interest in protecting the public from profane marks to be substantial enough to survive the scrutiny because the government sought to protect people from language they had a “right to view and hear.” As the Court put it, trademarks are not “foisted” upon listeners simply by being registered.
The Federal Circuit’s decision to remove the restriction on “immoral” or “scandalous” trademarks is not without precedent. Last year, the United States Supreme Court struck down the provision in §2(a) that prohibited the trademarking of disparaging language. Justice Alito, in the Court’s opinion, noted the limitation “offends a bedrock First Amendment principle: [s]peech may not be banned on the ground that it expresses ideas that offend.” He also argued, in another part of the opinion joined only by a plurality, that allowing such restrictions on speech merely because it has been deemed “commercial” would draw a line that is not always clear and leave freedom of speech endangered.
While some may be gleeful at the prospective end of the TPO’s “prudery” in regards to profanity, Ned Snow, a professor at University of South Carolina School of Law, argues that Congress should be able to “reward civility in commercial discourse” because withholding registration of a trademark does not prevent commercial success. He argues that because disparaging marks can still be successful both “financially and philosophically” without registration, freedom of speech is not being suppressed by §2(a).
Regardless of whether or not trademarks can be successful without being registered, First Amendment advocates will undoubtedly hail the Federal Circuit’s decision as a victory, and the floodgates will be open to profane and offensive trademarks alike. Whether parents will still feel comfortable taking their young children to shopping malls, however, remains to be seen.