CAFC addresses immoral/scandalous marks in Brunetti; 2(a) bar found unconstitutional

From the opening:


Erik Brunetti appeals from the decision of the Trademark
Trial and Appeal Board (“Board”) affirming the
examining attorney’s refusal to register the mark FUCT
because it comprises immoral or scandalous matter under
15 U.S.C. § 1052(a) (“§ 2(a)”). We hold substantial evidence
supports the Board’s findings and it did not err
concluding the mark comprises immoral or scandalous
matter. We conclude, however, that § 2(a)’s bar on registering
immoral or scandalous marks is an unconstitutional
restriction of free speech. We therefore reverse the
Board’s holding that Mr. Brunetti’s mark is unregistrable.



Yes, Tam is cited:


When Mr. Brunetti filed his appeal, his constitutional
argument was foreclosed by binding precedent. In
McGinley, our predecessor court held the refusal to register
a mark under § 2(a) does not bar the applicant from
using the mark, and therefore does not implicate the First
Amendment. 660 F.2d at 484. Commentators heavily
criticized McGinley and our continued reliance on it,
particularly in light of the many changes to First
Amendment jurisprudence over the last thirty years. In
re Tam, 808 F.3d 1321, 1333–34 & n.4 (Fed. Cir. 2015) (en
banc). We reconsidered McGinley en banc in Tam, which
held the disparagement provision of § 2(a) unconstitutional
under the First Amendment because it discriminated
on the basis of content, message, and viewpoint. Id.
at 1334–37, 1358. We held that, although trademarks
serve a commercial purpose as source identifiers in the
marketplace, the disparagement provision of § 2(a) related
to the expressive character of marks, not their commercial
purpose. Id. at 1337–39. As either a contentbased
or viewpoint-based regulation of expressive speech,
the disparagement provision was subject to strict scrutiny.
Id. at 1339. It was undisputed that the measure did
not survive such scrutiny. Id.




What the government argued:


The government concedes that § 2(a)’s bar on registering
immoral or scandalous marks is a content-based
restriction on speech. Oral Arg. at 11:57–12:05. And the
government does not assert that the immoral or scandalous
provision survives strict scrutiny review. Instead, the
government contends § 2(a)’s content-based bar on registering
immoral or scandalous marks does not implicate
the First Amendment because trademark registration is
either a government subsidy program or limited public
forum. Gov’t Letter Br. 14, In re Brunetti, No. 15-1109,
Docket No. 60 (Fed. Cir. July 20, 2017); Oral Arg.
at 12:06–21, 18:15–39. Alternatively, the government
argues trademarks are commercial speech implicating
only the intermediate level of scrutiny set forth in Central
Hudson. Gov’t Letter Br. 15, In re Brunetti, No. 15-1109,
Docket No. 60 (Fed. Cir. July 20, 2017); Oral Arg.
at 35:05–17. Under a less exacting degree of scrutiny, the
government argues the immoral or scandalous provision
is an appropriate content-based restriction tailored to
substantial government interests. We consider these
arguments in turn.



Footnote 1 is of interest:


The government maintains that our en banc decision
in Tam is not binding on this panel in light of the
Supreme Court’s decision in Tam. Oral Arg. at 12:23–
13:36, 15:43–54. We question the force of this assertion
because the Supreme Court did not reverse or otherwise
cast doubt on the continuing validity of our government
subsidy analysis and other aspects of our decision in Tam.
See Chen v. Allstate Ins. Co., 819 F.3d 1136, 1138 n.1 (9th
Cir. 2016); Balintulo v. Ford Motor Co., 796 F.3d 160, 166
n.28 (2d Cir. 2015). Because we independently reach the
same conclusion as the en banc court, we need not decide
whether that holding continues to bind future panel
decisions in this circuit.



As to the standard of review:


As in the case of disparaging marks, the
PTO’s rejections under § 2(a)’s bar on immoral or scandalous
marks are necessarily based in the government’s
belief that the rejected mark conveys an expressive message—namely,
a message that is scandalous or offensive
to a substantial composite of the general population. See
Tam, 808 F.3d at 1338. Section 2(a) regulates the expressive
components of speech, not the commercial components
of speech, and as such it should be subject to strict
scrutiny. See Sorrell v. IMS Health Inc., 564 U.S.
552, 565 (2011). There is no dispute that § 2(a)’s bar on
the registration of immoral or scandalous marks is unconstitutional
if strict scrutiny applies.



The Hustler case is cited:



Second, Supreme Court precedent makes clear that
the government’s general interest in protecting the public
from marks it deems “off-putting,” whether to protect the
general public or the government itself, is not a substantial
interest justifying broad suppression of speech. “[T]he
fact that society may find speech offensive is not a sufficient
reason for suppressing it.” Hustler Magazine, Inc. v.
Falwell, 485 U.S. 46, 55 (1988); Bolger v. Youngs Drug
Prods. Corp., 463 U.S. 60, 71 (1983) (“At least where
obscenity is not involved, we have consistently held that
the fact that protected speech may be offensive to some
does not justify its suppression.” (citation omitted));
Cohen v. California, 403 U.S. 15, 21 (1971) (“[T]he mere
presumed presence of unwitting listeners or viewers does
not serve automatically to justify curtailing all speech
capable of giving offense.”); Cox, 379 U.S. at 551
(“[C]onstitutional rights may not be denied simply because
of hostility to their assertion or exercise.”). “Where
the designed benefit of a content-based speech restriction
is to shield the sensibilities of listeners, the general rule is
that the right of expression prevails, even where no less
restrictive alternative exists.” Playboy, 529 U.S. at 813.

The Supreme Court’s decision in Tam supports our
conclusion that the government’s interest in protecting
the public from off-putting marks is an inadequate government
interest for First Amendment purposes.



The George Carlin case was cited:


Finally, the government does not have a substantial
interest in protecting the public from scandalousness and
profanities. The government attempts to justify this
interest by pointing to the Supreme Court’s decision in
FCC v. Pacifica Foundation, 438 U.S. 726 (1978). In
Pacifica, the Supreme Court upheld the constitutionality
of the FCC’s declaratory order determining that an afternoon
radio broadcast of George Carlin’s “Filthy Words”
monologue was indecent and potentially sanctionable. Id.
at 730–32. The Court explained “references to excretory
and sexual material . . . surely lie at the periphery of First
Amendment concern.” Id. at 742. The Court justified the
FCC’s order, however, because radio broadcasting has “a
uniquely pervasive presence in the lives of all Americans”
and is “uniquely accessible to children, even those too
young to read,” confronting Americans “in the privacy of
the home, where the individual’s right to be left alone
plainly outweighs the First Amendment rights of an
intruder.” Id. at 749. The Court stressed: “It is appropriate
to emphasize the narrowness of our holding.” Id. at
750. S



The matter of inconsistency arose:


Finally, no matter the government’s interest, it cannot
meet the fourth prong of Central Hudson. The PTO’s
inconsistent application of the immoral or scandalous
provision creates an “uncertainty [that] undermines the
likelihood that the [provision] has been carefully tailored.”
See Reno, 521 U.S. at 871. Nearly identical marks have
been approved by one examining attorney and rejected as
scandalous or immoral by another. The PTO registered
the mark FUGLY for use on clothing, but refused registration
for use on alcoholic beverages. Compare Reg.
No. 5,135,615, with Appl. No. 78,866,347. See also
COCAINE, Appl. No. 78,829,207 (rejected), COCAINE,
Reg. No. 1,340,874 (accepted). The PTO registered NO
BS! BRASS, Reg. No. Reg. No. 5,053,827, for entertainment
services but rejected NO BS ZONE, Appl.
No. 76,626,390, for internet training. NO $#!+, Appl.
No. 85,855,449, was rejected, but $#*! MY DAD SAYS,
Reg. No. 4,142,745, was allowed. See also ROLL TURD,
Appl. No. 86,448,988 (rejected), TURD HERDERS, Reg.
No. 5,180,286 (registered). Although the language in
these marks is offensive, we cannot discern any pattern
indicating when the incorporation of an offensive term
into a mark will serve as a bar to registration and when it
will not.



There was an opinion by Judge DYK concurring in the judgment.