The U.S. Court of Appeals for the Federal Circuit struck down the century-old ban on protecting “scandalous” and “immoral” trademarks as a First Amendment violation, and the Department of Justice wants the Supreme Court to reverse the decision.
Artist Erik Brunetti is free to call his clothing line what he wants, Solicitor General Noel J. Francisco told the court in the government’s petition, but the government does not have to provide the trademark protection.
“The scandalous-marks provision does not prohibit any speech, proscribe any conduct, or restrict the use of any trademark. Nor does it restrict a mark owner’s common-law trademark protections,” Francisco wrote. “Rather, it simply directs the USPTO to refuse, on a viewpoint-neutral basis, to provide the benefits of federal registration to scandalous marks.”
But the Supreme Court in 2017 ruled unanimously that another part of the trademark law — one that banned registering trademarks that were considered “disparaging”— violated the First Amendment.
That ruling, Matal v. Tam, came in a case that involved an Asian American rock group called the Slants, which tried to register the band’s name in 2011. The band was turned down by the USPTO because officials said it was likely to offend Asian Americans.
The USPTO defines “scandalous” marks as those that a substantial composite of the general public would find “‘shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience or moral feelings; . . . or calling out for condemnation,” according to the government’s brief.
Even though Brunetti won at the appeals court, he agreed the Supreme Court should take the case to clear up questions left from the Tam decision.
He contends there is no way the decision on which trademarks are scandalous can be viewpoint-neutral, as the government contends, and that history shows arbitrary decisions.
For instance, Brunetti’s lawyer John R. Sommer points out, the office has registered a trademark for “FCUK,” as well as “WTF IS UP WITH MY LOVE LIFE?!”
“In short, the Scandalous Clause is not a content-neutral rule that rejects all profanity, excretory and sexual content,” Sommer wrote. “Instead, the government is selectively approving or refusing profanity, excretory and sexual content based upon the level of perceived offensiveness.”
He added that, viewing trademarks that have been registered and those that have been denied protection, the government has taken sides:
“Raising babies is sweet, making babies is disgusting. Kissing is fine, sex is dirty. Feminism is good, misogyny is bad. The word PENIS is allowed, an outline of a penis is not.”