from the United States Patent and Trademark Office, Trademark
Trial and Appeal Board in No. 85310960.
R. Sommer, Irvine, CA, argued for appellant.
Marc Salzman, Appellate Staff, Civil Division, United States
Department of Justice, Washington, DC, argued for appellee
Joseph Matal. Also represented by Daniel Tenny, Mark R.
Freeman, Benjamin C. Mizer; Nathan K. Kelley, Thomas L.
Casagrande, Christina Hieber, Mary Beth Walker, Molly R.
Silfen, Thomas W. Krause, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA.
Dyk, Moore, and Stoll, Circuit Judges.
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
Section 2(a)'s Bar on Registration of Immoral or
2(a) of the Lanham Act provides that the Patent and Trademark
Office ("PTO") may refuse to register a trademark
that "[c]onsists of or comprises 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 . . . ." 15 U.S.C. §
1052(a). While § 2(a) identifies "immoral" and
"scandalous" subject matter as separate bases to
refuse to register a trademark-and are provisions separated
by the "deceptive" provision-the PTO generally
applies the bar on immoral or scandalous marks as a unitary
provision ("the immoral or scandalous provision").
See TMEP § 1203.01 ("Although the words
'immoral' and 'scandalous' may have somewhat
different connotations, case law has included immoral matter
in the same category as scandalous matter."); In re
McGinley, 660 F.2d 481, 485 n.6 (CCPA 1981)
("Because of our holding, infra, that appellant's
mark is 'scandalous, ' it is unnecessary to consider
whether appellant's mark is 'immoral.' We note
the dearth of reported trademark decisions in which the term
'immoral' has been directly applied."); see
also Anne Gilson LaLonde & Jerome Gilson,
Trademarks Laid Bare: Marks That May Be Scandalous or
Immoral, 101 Trademark Rep. 1476, 1489 (2011)
("U.S. courts and the Board have not distinguished
between 'immoral' and 'scandalous' and have
focused on whether marks are scandalous or offensive rather
than contrary to some accepted standard of morality."
(citation omitted)). The bar on immoral or scandalous marks
was first codified in 1905, see Act of Feb. 20,
1905, ch. 592, § 5(a), 33 Stat. 724, 725, and re-enacted
in the Lanham Act in 1946, Pub. L. 79-489, § 2(a), 60
Stat. 427, 428 (codified at 15 U.S.C. § 1052(a)).
determine whether a mark should be disqualified under §
2(a), the PTO asks whether a "substantial composite of
the general public" would find the mark scandalous,
defined as "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." In re Fox, 702 F.3d 633,
635 (Fed. Cir. 2012) (alterations omitted) (quoting In re
Mavety Media Grp. Ltd., 33 F.3d 1367, 1371 (Fed. Cir.
1994)). Alternatively, "the PTO may prove scandalousness
by establishing that a mark is 'vulgar.'"
Id. (quoting In re Boulevard Entm't,
Inc., 334 F.3d 1336, 1340 (Fed. Cir. 2003)). Vulgar
marks are "lacking in taste, indelicate, [and] morally
crude . . . ." See McGinley, 660 F.2d at 486
(quoting In re Runsdorf, 171 U.S.P.Q. 443, 443-44
(1971)). The PTO makes a determination as to whether a mark
is scandalous "in the context of contemporary
attitudes" and "in the context of the marketplace
as applied to only the goods described in the
application." Fox, 702 F.3d at 635 (internal
quotation marks and alterations omitted) (quoting
Mavety, 33 F.3d at 1371).
the scandalousness determination is made in the context of
contemporary attitudes, the concept of what is actually
immoral or scandalous changes over time. Early cases often,
but not always, focused on religious words or symbols.
See, e.g., In re Riverbank Canning Co., 95
F.2d 327, 329 (CCPA 1938) (MADONNA for wine); Ex parte
Martha Maid Mfg. Co., 37 U.S.P.Q. 156 (Comm'r Pat.
1938) (QUEEN MARY for women's underwear); Ex Parte
Summit Brass & Bronze Works, Inc., 59 U.S.P.Q. 22
(Comm'r Pat. 1943) (AGNUS DEI for safes); In re P. J.
Valckenberg, Gmbh, 122 U.S.P.Q. 334 (T.T.A.B. 1959)
(MADONNA for wine); In re Reemtsma Cigarettenfab-riken
G.M.B.H., 122 U.S.P.Q. 339 (T.T.A.B. 1959) (SENUSSI (a
Muslim sect that forbids smoking) for cigarettes); In re
Sociedade Agricola E. Comerical Dos Vinhos Messias,
S.A.R.L., 159 U.S.P.Q. 275 (T.T.A.B. 1968) (MESSIAS for
wine and brandy). In later cases, the PTO rejected a wider
variety of marks as scandalous. See, e.g.,
Runsdorf, 171 U.S.P.Q. at 443 (BUBBY TRAP for
brassieres); McGinley, 660 F.2d at 482 (mark
consisting of "a photograph of a nude man and woman
kissing and embracing in a manner appearing to expose the
male genitalia" for a swingers newsletter); In re
Tinseltown, Inc., 212 U.S.P.Q. 863 (T.T.A.B. 1981)
(BULLSHIT on handbags, purses, and other personal
accessories); Greyhound Corp. v. Both Worlds, Inc.,
6 U.S.P.Q.2d 1635 (T.T.A.B. 1988) (mark depicting a
defecating dog); Mavety, 33 F.3d 1367 (BLACK TAIL
for adult entertainment magazines).
Facts of This Case
Brunetti owns the clothing brand "fuct, " which he
founded in 1990. In 2011, two individuals filed an
intent-to-use application (No. 85/310, 960) for the mark FUCT
for various items of apparel. The original applicants
assigned the application to Mr. Brunetti, who amended it to
allege use of the mark. The examining attorney refused to
register the mark under § 2(a) of the Lanham Act,
finding it comprised immoral or scandalous matter. The
examining attorney reasoned that FUCT is the past tense of
the verb "fuck, " a vulgar word, and is therefore
scandalous. J.A. 203.
Brunetti requested reconsideration and appealed to the Board.
The examining attorney denied reconsideration, and the Board
affirmed. In its decision, the Board stated the dictionary
definitions in the record uniformly characterize the word
"fuck" as offensive, profane, or vulgar. The Board
noted that the word "fuct" is defined by Urban
Dictionary as the past tense of the verb "fuck" and
pronounced the same as the word "fucked, " and
therefore found it is "recognized as a slang and literal
equivalent of the word 'fucked, '" with
"the same vulgar meaning." J.A. 6-7 & n.6.
Based on the examining attorney's Google Images search
results, the Board stated Mr. Brunetti used the mark in the
context of "strong, and often explicit, sexual imagery
that objectifies women and offers degrading examples of
extreme misogyny, " with a theme "of extreme
nihilism-displaying an unending succession of anti-social
imagery of executions, despair, violent and bloody scenes
including dismemberment, hellacious or apocalyptic events,
and dozens of examples of other imagery lacking in
taste." J.A. 8-9. The Board explained that Mr.
Brunetti's use of the mark "will be perceived by his
targeted market segment as the phonetic equivalent of the
wor[d] 'fucked.'" J.A. 9. In light of the
record, it found Mr. Brunetti's assertion that the mark
"was chosen as an invented or coined term stretches
credulity." Id. It concluded that the mark is
vulgar and therefore unregistrable under § 2(a) of the
Lanham Act. Mr. Brunetti appealed. We have jurisdiction under
28 U.S.C. § 1295(a)(4).
Brunetti argues substantial evidence does not support the
Board's finding the mark FUCT is vulgar under § 2(a)
of the Lanham Act. He argues even if the mark is vulgar,
§ 2(a) does not expressly prohibit the registration of
vulgar marks and a mark should be approved for registration
when there is doubt as to its meaning, as he alleges there is
here. Alternatively, Mr. Brunetti challenges the
constitutionality of § 2(a)'s bar on immoral or
Mark FUCT is Vulgar and Therefore Scandalous
determination that a mark is scandalous is a conclusion of
law based upon underlying factual inquiries. Fox,
702 F.3d at 637. We review the Board's factual findings
for substantial evidence and its ultimate conclusion de novo.
Id. Substantial evidence is "more than a mere
scintilla" and "such relevant evidence as a
reasonable mind might accept as adequate" to support a
conclusion. Consol. Edison v. NLRB, 305 U.S. 197,
undisputed that the word "fuck" is vulgar.
Dictionaries in the record characterize the word as
"taboo, " "one of the most offensive"
English words, "almost universally considered vulgar,
" and an "extremely offensive expression."
J.A. 5-6; J.A. 206 (Collins Online Dictionary); J.A. 209
(Vocabulary.com); J.A. 211 (Wikipedia.com); J.A. 351
(MacMillan Dictionary). Mr. Brunetti argues that the
vulgarity of "fuck" is irrelevant to whether the
mark FUCT is vulgar. We do not agree.
evidence supports the Board's finding that
"fuct" is a "phonetic twin" of
"fucked, " the past tense of the word
"fuck." J.A. 10. Urban Dictionary defines
"fuct" as the "past tense of the verb
fuck." J.A. 83. Mac-Millan Dictionary indicates that the
word "fucked" is pronounced phonetically as
/fʌkt/, which the Board found sounds like
"fukt" or "fuct." J.A. 6 & n.6. This
evidence linking the two terms is sufficient to render the
vulgarity of the word "fuck" relevant to the
vulgarity of Mr. Brunetti's mark.
of the use of Mr. Brunetti's mark in the marketplace
further buttresses the Board's finding of a link between
the mark and the word "fuck." The Board found the
term "fuct" is used on products containing sexual
imagery and that consumers perceive the mark as having
"an unmistakable aura of negative sexual
connotations." J.A. 9. One T-shirt-captioned the
"FUCT Orgy" shirt-depicts a group sex scene. J.A.
346. Another T-shirt contains the word "FUCK" in
yellow letters, with a "T" superimposed over the
"K" such that the word FUCK is still visible. J.A.
325. A third T-shirt has the brand name FUCT depicted above
the slogan "1970 smokin dope & fucking in the
streets." J.A. 312. Because one meaning of
"fuck" is "to have sex with someone, "
the placement of the mark on products containing sexual
imagery makes it more likely that the mark will be perceived
as the phonetic equivalent of the word "fucked."
Brunetti challenges the evidence on which the Board relied in
making the vulgarity finding. He argues that Urban Dictionary
is not a standard dictionary edited by lexicographers and the
author of the definition cited by the Board lacks
lexicographic expertise. He argues that the Board did not
consider his current line of products, which he provided to
the examining attorney, but instead relied on a random
collection of outdated products collected from Google Images.
He argues the Board should not have considered these images
because they lack foundation, are inadmissible hearsay, and
are irrelevant to the current perception of the mark in the
marketplace. He also argues that the majority of the marked
products contain no sexual imagery.
Brunetti's arguments have no merit. For ex parte
proceedings, the Board permits the examining attorney to
consider materials from the Internet, having adopted a
"somewhat more permissive stance with respect to the
admissibility and probative value of evidence." TBMP
§§ 1208, 1208.03. The pedigree of the author of a
definition may affect the weight that evidence is given but
does not render the definition irrelevant. Similarly, the
ages of the images collected by the examining attorney may
affect evidentiary weight, not relevance.
Brunetti also argues that the Board ignored probative
evidence that the mark is not vulgar. He argues that both he
and the owner of a high-end clothing store declared that the
mark was not vulgar. He argues that the meaning of the term
"fuct" is ambiguous, but that to the extent it has
any meaning, it is "Friends yoU Can't Trust."
See Mavety, 33 F.3d at 1374 ("commend[ing] the
practice" of erring on the side of publication when
marks are not clearly scandalous). He claims that in over
twenty years of operation, he received only a single
complaint about his brand name and the brand is
mass-distributed by "high-end national retailers"
like Urban Outfitters. Appellant's Br. 8. Finally, he
argues that two of Urban Dictionary's seven definitions
of the term "fuct" refer to his brand name, while
only one definition is vulgar.
Brunetti's proffered evidence does not change our
conclusion that substantial evidence supports the Board's
findings. The Board explicitly considered Mr. Brunetti's
declaration and found it "stretche[d] credulity"
that "fuct" was chosen as an invented or coined
term for "Friends yoU Can't Trust, " given the
contradictory record evidence. J.A. 9-10. Mr. Brunetti's
unverifiable claim about the number of customer complaints
may demonstrate that the mark is not offensive to a certain
segment of the market. That does not satisfy his burden on
appeal, however, to establish that the Board lacked
substantial evidence for its determination that a
"substantial composite" of the American public
would find the mark vulgar. And the fact that the Board could
have relied on one of the other five definitions of the term
"fuct" on Urban Dictionary-a website to which
anyone can anonymously submit definitions-does not
demonstrate that the Board's reliance on that website is
not substantial evidence. The Board reasonably focused on the
highest rated definition, suggesting that it is more common
or accurate than the alternative, non-vulgar definitions.
Brunetti argues that even if FUCT is vulgar, § 2(a) does
not prohibit the registration of vulgar marks- only
"immoral" or "scandalous" marks. He
argues that to be immoral or scandalous, a mark must be more
than merely vulgar. He argues that extending § 2(a) to
vulgar marks is contrary to the plain language of the
not agree. We have previously held "the PTO may prove
scandalousness by establishing that a mark is
'vulgar.'" Fox, 702 F.3d at 635;
see also Boulevard Entm't, 334 F.3d at 1340
("A showing that a mark is vulgar is sufficient to
establish that it 'consists of or comprises immoral . . .
or scandalous matter' within the meaning of section
1052(a)."). We are bound by these holdings.
we could overrule our prior holding that a showing of
vulgarity is sufficient to establish that a mark
"consists of or comprises immoral . . . or scandalous
matter, " we see no justification for doing so in light
of the evidence of record. At the time of the passage of the
Lanham Act, dictionaries defined "scandalous" as
"shocking to the sense of truth, decency, or propriety,
" "[g]iving offense to the conscience or moral
feelings, " or "calling out [for]
condemnation." McGinley, 660 F.2d at 485-86
(citing Webster's New International Dictionary (2d ed.
1942); Funk & Wagnalls New Standard Dictionary (1945)).
Other definitions characterize scandalous as
"disgraceful, " "offensive, " or
"disreputable." Id. (citing Webster's
New International Dictionary (2d ed. 1942); Funk &
Wagnalls New Standard Dictionary (1945)). We see no
definition of scandalous that, in light of the PTO's fact
findings, would exempt Mr. Brunetti's mark.
no merit in Mr. Brunetti's arguments relating to whether
the mark is scandalous and therefore prohibited registration
under § 2(a). Substantial evidence supports the
Board's finding the mark FUCT is vulgar and therefore the
Board did not err in concluding the mark is not registrable
under § 2(a).
Section 2(a)'s Bar on Immoral or Scandalous Marks is
Unconstitutional Under the First Amendment
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 content-based 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.
rejected the government's arguments that § 2(a) did
not implicate the First Amendment, holding instead that the
PTO's denial of marks had a chilling effect on speech.
Id. at 1339-45. We also rejected the
government's arguments that trademark registration was
government speech, id. at 1345-48, and that
trademark registration was a federal subsidy, id. at
1348-55. Finally, we held the disparagement provision did not
survive even the lesser scrutiny afforded to commercial
speech under Central Hudson Gas & Electric Corp. v.
Public Service Commission, 447 U.S. 557, 563 (1980),
because the government had put forth no substantial interests
justifying the regulation of speech. Tam, 808 F.3d
banc court noted that § 2(a) contains a hodgepodge of
differing prohibitions on registration, and as such, the
holding in Tam was limited to § 2(a)'s
disparagement provision. Id. at 1330; see also
id. at 1330 n.1. However, the court left open whether
other portions of § 2 may also be unconstitutional, and
held that McGinley was overruled insofar as it could
prevent a future panel from reconsidering the
constitutionality of other portions of § 2. Id.
at 1330 n.1.
the issuance of our en banc decision in Tam, we
requested additional briefing from both parties in this case
on "the impact of the Tam decision on Mr.
Brunetti's case, and in particular whether there is any
basis for treating immoral and scandalous marks differently
than disparaging marks." In re Brunetti, No.
15-1109, Docket No. 51 (Fed. Cir. Dec. 22, 2015).
Both parties filed letter briefs. The government stated that
"given the breadth of the Court's Tam
decision and in view of the totality of the Court's
reasoning, " there is no reasonable basis for treating
immoral or scandalous marks differently than disparaging
marks. Gov't Letter Br. 2, In re Brunetti, No.
15-1109, Docket No. 52 (Fed. Cir. Jan. 21, 2016). It
maintained, however, that if the Solicitor General sought
Supreme Court review of our en banc decision in Tam,
"the government may argue that, under reasoning less
sweeping than that adopted in Tam, the bar on
registration of scandalous and immoral marks would survive
even if the bar on registration of disparaging marks were
held invalid." Id. at 4. The Supreme Court
subsequently granted certiorari. Lee v. Tam, 137
S.Ct. 30 (2016).
19, 2017, the Supreme Court unanimously affirmed our en banc
decision in Tam. Matal v. Tam, 137 S.Ct.
1744 (2017). The Court held that trademarks are private, not
government, speech. Id. at 1757-61. Pursuant to two
opinions authored by Justice Alito and Justice Kennedy, it
concluded that § 2(a)'s bar on the registration of
disparaging marks discriminated based on viewpoint.
Id. at 1763 (Alito, J.); id. at 1765
(Kennedy, J.). The Court explained the disparagement
provision "offends a bedrock First Amendment principle:
Speech may not be banned on the ground that it expresses
ideas that offend." Id. at 1751 (Alito, J.);
accord id. at 1766 (Kennedy, J.). The plurality
opinion, authored by Justice Alito and joined by Chief
Justice Roberts, Justice Thomas, and Justice Breyer, further
concluded that the constitutionality of the disparagement
provision could not be sustained by analyzing trademark
registration as either a federal subsidy or a federal
program. Id. at 1760-63 (Alito, J.). The remaining
four participating Justices opined, in a concurring opinion
authored by Justice Kennedy, that "the viewpoint
discrimination rationale renders unnecessary any extended
treatment of other questions raised by the parties."
Id. at 1765 (Kennedy, J.).
opinions held the disparagement provision unconstitutionally
restricted free speech, left open was "the question of
whether Central Hudson provides the appropriate test
for deciding free speech challenges to provisions of the
Lanham Act." Id. at 1764 n.17 (Alito, J.);
see also id. at 1767 (Kennedy, J.). Justice
Alito's opinion concluded the disparagement provision
failed even the intermediate test under Central
Hudson because the prohibition was not narrowly drawn to
a substantial government interest. Id. at 1764-65
(Alito, J.). Justice Kennedy's opinion concluded that,
because the disparagement provision discriminates based on
viewpoint, it was subject to heightened scrutiny, which it
did not withstand. Id. at 1767-68 (Kennedy, J.).
Neither opinion reached the constitutionality of other
provisions of § 2 of the Lanham Act. See, e.g.,
id. at 1768 (Kennedy, J.).
the issuance of the Supreme Court's decision in
Tam, we requested additional briefing from the
parties regarding the impact of the Supreme Court's
decision on Mr. Brunetti's case. In re Brunetti,
No. 15-1109, Docket No. 58 (Fed. Cir. June 20,
2017). Both parties submitted letter briefs and we
heard oral argument on August 29, 2017. The government
contends Tam does not resolve the constitutionality
of § 2(a)'s bar on registering immoral or scandalous
marks because the disparagement provision implicates
viewpoint discrimination, whereas ...