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In re Brunetti

United States Court of Appeals, Federal Circuit

December 15, 2017


         Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board in No. 85310960.

          John R. Sommer, Irvine, CA, argued for appellant.

          Joshua 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.

          Before Dyk, Moore, and Stoll, Circuit Judges.


          Moore, Circuit Judge.

         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.


         I. Section 2(a)'s Bar on Registration of Immoral or Scandalous Marks

         Section 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)).

         To 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).

         Because 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).

         II. Facts of This Case

         Mr. 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.

         Mr. 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).


         Mr. 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 scandalous marks.

         I. The Mark FUCT is Vulgar and Therefore Scandalous

         The 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, 229 (1938).

         It is 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 (; J.A. 211 (; 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.

         Substantial 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.

         Evidence 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." J.A. 9.

         Mr. 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.

         Mr. 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.

         Mr. 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.

         Mr. 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.

         Mr. 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 statute.

         We do 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.

         Even if 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.

         We see 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).

         II. Section 2(a)'s Bar on Immoral or Scandalous Marks is Unconstitutional Under the First Amendment

         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 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.

         We 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 at 1355-58.

         The en 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.

         Following 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).

         On June 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.).

         Both 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.).

         Following 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 ยง 2(a)'s bar on registering immoral or scandalous marks because the disparagement provision implicates viewpoint discrimination, whereas ...

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