Judges Grill Government on Vulgar, `Immoral’ Trademark Ban

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By Anandashankar Mazumdar

Federal appeals court judges, during Aug. 29 oral argument, questioned the government’s interest in banning the registration of a vulgar-sounding trademark for a clothing line.

Fashion designer Erik Brunetti tried to register his Fuct brand with the Patent and Trademark Office but was rejected based on the federal ban on scandalous and immoral trademark registrations. His appeal is being heard by the U.S. Court of Appeals for the Federal Circuit, which last year ruled that a similar ban on registering racial and ethnic slurs was unconstitutional ( In re Brunetti, Fed. Cir., No. 15-1109, argued 8/29/17 ).

At one point, Judge Kimberly A. Moore expressed frustration that Justice Department attorney Joshua M. Salzman was “unskillfully” evading the question of exactly what valid government interest was served by the ban. Salzman finally said the government’s interest was to encourage the use of trademarks that are not scandalous or immoral. Moore also said that, looking back at the history of rejected registrations by the PTO, she could find no consistency in how the agency decided what material was too immoral or scandalous to be registered.

Brunetti’s counsel, John R. Sommer of Irvine, Calif., said that the whole case is “quite simple,” because the ban on scandalous and immoral registrations should be declared unconstitutional under the same reasoning that the U.S. Supreme Court used to strike down a ban on disparaging marks in its recent decision over whether an Asian American rock band, the Slants, could register its trademark, a slur used to describe Asians.

Most mainstream consumer businesses are unlikely want to register vulgar or sexually explicit trademarks. However, businesses that deal in goods and services on the fringes of polite society—such as in the adult entertainment industry—could take advantage of a decision in Brunetti’s favor.

The Supreme Court’s unanimous June decision in Matal v. Tam affirmed the Federal Circuit’s full court ruling that the disparaging marks ban was unconstitutional. That ruling was written by Moore, and was joined by Judge Kara F. Stoll. Judge Timothy B. Dyk, the third judge on the Brunetti panel, agreed that the Slants registration should have been allowed, but didn’t agree that the ban was entirely unconstitutional.

Carlin’s Seven Dirty Words Referenced

The court seemed to save its hard questions for the government, Christine Haight Farley, a law professor at American University who attended the argument, told Bloomberg BNA.

She also said that questioning by Dyk indicated that he was looking for a way to narrow the definition of “immoral or scandalous” in a manner that would allow the court to uphold the constitutionality of the clause.

The judges and lawyers made frequent reference to the Supreme Court’s 1978 ruling in Federal Communications Commission v. Pacifica Foundation, which said that the government could ban the broadcast of George Carlin’s “Seven Dirty Words” act on the public airwaves during certain times of day.

The Pacifica case said that the government could restrict indecent language to times when children were unlikely to hear it accidentally, and Dyk asked Sommer whether “immoral or scandalous” could be defined as “indecent"—and, thus, okay to restrict.

But Sommer rejected that argument because restricting certain speech from being broadcast at specific times isn’t comparable to denying a trademark registration, which can’t be limited to certain times of the day.

Supreme Court Struck Down Part of the Law

The Supreme Court only ruled on the disparaging trademarks ban, a decision that defeated a challenge to the Washington Redskins football team’s trademark registrations by a group of American Indian activists. Scandalous trademarks are covered by a different but very similar clause of the Lanham Trademark Act of 1946.

Section 2(a) of the Lanham Act, 15 U.S.C. §1052(a), lists several kinds of trademarks that the PTO can’t register, including a trademark that “consists of or comprises immoral, deceptive, or sandalous matter.”

A trademark owner doesn’t necessarily need a federal registration to protect his or her trademark rights, but it offers some advantages. These advantages are so significant, Sommer told the court, that trademarks that are rejected by the PTO usually end up on the scrap heap.

A scandalous or immoral trademark is one that offends the sensibilities of the public at large. The PTO argued that Tam doesn’t apply because a ban on scandalous or immoral registrations isn’t discriminating based on the speaker’s viewpoint. But Sommer argued that scandalous or immoral language can express a viewpoint.

To contact the reporter on this story: Anandashankar Mazumdar in Washington at AMazumdar@bna.com

To contact the editor responsible for this story: Mike Wilczek at mwilczek@bna.com

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