But a recent Supreme Court decision turned the tide. In June, the court struck down part of the law barring registration of material that officials consider disparaging, siding with an Asian American musician who sought to trademark the name of his band, which came from a racial slur.
Now, due in large part to that decision, a federal appeals court has ruled that prohibitions on immoral or scandalous language, too, are unconstitutional, further eroding the trademark law’s restrictions and handing Brunetti a long awaited victory.
On Friday, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit ruled that Fuct, while vulgar, was protected speech under the First Amendment.
“There are words and images that we do not wish to be confronted with, not as art, nor in the marketplace,” Judge Kimberly Moore wrote for the panel. “The First Amendment, however, 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. ”
The ruling deals another blow to the Lanham Act, the main U.S. trademark law under which the names of a plethora of goods and services receive legal protection.
It comes just six months after the Supreme Court decision axing the law’s disparagement clause. In that case, musician Simon Tam tried to register the Slants, the name of the Asian American rock group he founded, but was denied on the grounds that the name disparaged an ethnic group. The Supreme Court ruled the that the move violated his free speech rights.
The high court’s conclusions in the Tam case seemed to give Brunetti just the boost he needed to prevail in his lawsuit over the Fuct trademark. As Moore noted in her ruling Friday, the Federal Circuit requested additional briefings after the decision came down, asking specifically whether there was any reason to treat immoral or scandalous material differently than disparaging material.
“Timing and the stars were aligned to have this issue addressed,” John Sommer, an attorney for Brunetti, told Courthouse News.
Brunetti founded Fuct in 1990 and filed for the trademark in 2011. The U.S. Patent and Trademark Office refused to register it, saying it counted as immoral or scandalous material.
Thereafter, he appealed to the Trademark Trial and Appeal Board, which affirmed the USPTO’s decision. The board cited conventional dictionary definitions calling the f-word profane, as well as an entry from Urban Dictionary, the crowdsourced collection of slang words, that defined “fuct” as the past tense of the widely used curse word. There was no doubt, the board said, that the target market would read it as the phonetic and literal equivalent of the f-word.
Moore agreed that “fuct” was vulgar, and said the USPTO and the board were justified in finding at the time that the brand could not be registered under the law.
But ultimately, the government didn’t have a substantial interest in shielding the public from offensive trademarks, according to the judge. It was different, she wrote, than the government’s interest in restricting vulgar language in radio broadcasts, where children could be inadvertently exposed to offensive language.
“A trademark is not foisted upon listeners by virtue of its being registered. Nor does registration make a scandalous mark more accessible to children,” Moore wrote.
“Regardless of whether a trademark is federally registered, an applicant can still brand clothing with his mark, advertise with it on the television or radio, or place it on billboards along the highway,” she continued. “In this electronic/Internet age, to the extent that the government seeks to protect the general population from scandalous material, with all due respect, it has completely failed.”
The government tried to sidestep First Amendment issues in the case by arguing, among other things, that trademark registration was government speech or a federal subsidy subject to restrictions. If that were the case, the judge said, all kinds of otherwise protected speech would face government censorship.
The judge also noted that the USPTO had applied the immoral or scandalous provision of the law inconsistently. According to her ruling, the agency had registered FCUK and MUTHA EFFIN BINGO but rejected Fuct and F**K PROJECT as scandalous.
Moore wrote that broad range of products and services have been denied trademark registration under the provision, which she called an “unconstitutional restriction of free speech.” They included books, websites, beverages and live entertainment.
“These refusals chill speech anywhere,” Moore wrote, “from the Internet to the grocery store.”