877 F.3d 1330 (Fed. Cir. 2017), 2015-1109, In re Brunetti

Docket Nº:2015-1109
Citation:877 F.3d 1330
Opinion Judge:Moore, Circuit Judge.
Party Name:IN RE: Erik BRUNETTI, Appellant
Attorney: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. CASAGRAN...
Judge Panel:Before Dyk, Moore, and Stoll, Circuit Judges. Concurring opinion filed by Circuit Judge Dyk. Dyk, Circuit Judge, concurring in the judgment.
Case Date:December 15, 2017
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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877 F.3d 1330 (Fed. Cir. 2017)

IN RE: Erik BRUNETTI, Appellant

No. 2015-1109

United States Court of Appeals, Federal Circuit

December 15, 2017

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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.

OPINION

Concurring opinion filed by Circuit Judge Dyk.

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.

BACKGROUND

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

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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 Cigarettenfabriken 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.,

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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).

DISCUSSION

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...

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