Lead Opinion
Concurring opinion filed by Circuit Judge Dyk.
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 “[cjonsists 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
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,
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.,
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 samé 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. Brun-etti 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' ah unending succession of anti-social imagery of executions, despair, violent and bloody scenes including dismemberment, hella-cious 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 un-registrable 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) qf 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 FUC.T is Vulgar and Therefore Scandalous
The determination that a mark is scandalous Us a conclusion of law. based upon underlying factual inquiries. Fox,
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 vulgai’,” 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.
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. MacMillan Dictionary indicates that the word “fucked” is pronounced phonetically as /fAkt/, which the Board found sounds like “fukt” or “fuct.” J.A. (3 & 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
Mr. Brunetti’s proffered evidence does not change our conclusion that substantial evidence supports the Board’s findings. The Board explicitly considered Mr. Brun-etti’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,
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,
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
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 mapy changes to .First Amendment jurisprudence over the last thirty years. In re Tam,
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,
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.l. 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.l.
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
On June 19, 2017, the Supreme Court unanimously affirmed our en banc .decision in Tam. Matal v. Tam, — U.S. —,
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.1.7 (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 op. 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 Tarn, 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 the immoral or scandalous provision is viewpoint neutral. Gov’t Letter Br. 6-9, In re Brunetti, No. 15-1109, Docket No. 60 (Fed. Cir. July 20,2017).
■ While we question the viewpoint neutrality of. the immoral or scandalous provision, we need, not . resolve that issue. Independent of whether the immoral or scandalous provision is viewpoint discriminatory, we conclude the provision, impermissibly discriminates based on content in violation of the First Amendment.
A. Section 2(a)’s Bar on Registering Immoral or Scandalous Marks is an . Unconstitutional Content-Based Restriction on Speech
The government restricts speech based on content when “a law applies
The government concedes that § 2(a)’s bar on registering immoral or scandalous marks is -a content-based restriction on speech. Oral Arg. at 11:57-12:05. And the government does not assert that the immoral or scandalous provision survives strict scrutiny review. Instead, the government contends § 2(a)!s content-based bar on registering immoral or scandalous marks does not implicate the First Amendment because trademark registration' is either a government subsidy program or limited public forum. Gov’t Letter Br. 14, In re Brunetti, No. 15-1109, Docket No. 60 (Fed. Cir. July 20, 2017); Oral Arg. at 12:06-21, 18:15-39. Alternatively, the government argues trademarks are commercial speech implicating‘only the intermediate level of scrutiny set forth in Central Hudson. Gov’t Letter Br. 15, In re Brunetti, No. 15-1109, Docket No. 60 (Fed. Cir. July 20, 2017); Oral Arg. at 35:05-17. Under a less exacting degree of scrutiny, the government argues the immoral or scandalous provision is an appropriate content-based restriction tailored to substantial government interests. We consider these arguments in turn.
1. Trademark Registration is Not a Government Subsidy Program
The Spending Clause of the U.S. Constitution “provides Congress broad discretion to tax and spend for the ‘general Welfare,’ including by funding particular state or private programs or activities.” Agency for Int’l Dev. v. All. for Open Soc’y Int’l, Inc.,
[E]ven though a person has no “right” to a valuable governmental benefit and even though the government may deny him the benefit for any number of reasons, there are some reasons upon which the government may not rely. It maynot deny a benefit to-a person on a basis that infringes his constitutionally protected interests—especially, his interest in freedom of speech.
Perry v. Sindermann,
The government argues, pursuant to the government subsidy framework articulated in Agency for International Development, that § 2(a)’s bar on registering immoral or scandalous marks is simply a reasonable exercise of its spending power, in which the bar on registration is a constitutional condition defining the limits of trademark registration. Our court rejected the applicability of this analysis to trademark registration, 9-3, in our en banc decision in Tam.
Unlike trademark registration, the programs at issue in the Supreme Court’s cases upholding the constitutionality of conditions under the Spending Clause necessarily and directly implicate Congress’ power to spend or control government property. For example, Rust addressed a condition on the distribution of federal funds for family planning services.
Trademark registration does not implicate Congress’ power to spend funds. An applicant does not receive federal funds upon the PTO’s consideration of, or grant of, a trademark. The only exchange of funds flows from the applicant to the PTO. The applicant pays the applicable trademark process and service fees set forth in 37 C.F.R. § 2.6(a)(1), which are then made “available to the Director to carry out the activities of the [PTO].” 35 U.S.C. § 42(c)(1). As explained in our en banc opinion in Tam, since 1991, trademark registration fees—not appropriations from taxpayers—have entirely funded the direct operating expenses associated with trademark registration.
Nor is the grant of trademark registration a subsidy equivalent. “Registration is significant. The Lanham Act confers important legal rights and benefits on trademark owners who register their marks.” B&B Hardware, Inc. v. Hargis Indus., Inc., — U.S.-,
Our sister courts confirm that when government registration does not implicate Congress’ authority under the Spending Clause, the government subsidy line of case law does not govern the constitutionality of § 2(a)’s bar on registering immoral or scandalous marks. See, e.g., Dep’t of Tex., Veterans of Foreign Wars v, Tex. Lottery Comm’n,
If the government is correct that a registration program, such as this, gives the government the authority to regulate the content of speech, then' every government registration program would, provide the government with similar censorship authority. For example, there is no principled basis to distinguish between the registration of trademarks and the registration of copyrights under the government program rationale. The subsidy line of case law cannot justify the government’s content-based bar on registering immoral or scandalous marks. -
2,- Trademark Registration is Not a Limited Public Forum
The constitutionality of speech restrictions on government property are analyzed under the Supreme Court’s “forum analysis,” which “determine[s] when a governmental entity, in regulating property in its charge, may place limitations on speech.” See, e.g., Christian Legal Soc’y of the Univ. of Cal. Hastings Coll. of the Law v. Martinez,
The first two forums are traditional public forums and designated public forums. Traditional public forums are places such as “streets and parks which have immemorially been held in trust for the use of the public and, time out of mind,
The remaining forum category is the limited public forum, at times referred to as a non-public forum. Limited public forums are places the government has “limited to use by certain groups or dedicated solely to the discussion of certain subjects.” Id. at 470,
The government argues that the federal trademark registration program is a limited public forum, subjecting § 2(a)’s content-based restriction on marks comprising immoral or scandalous subject matter to a less demanding degree of scrutiny. Gov’t Letter Br. 14-15, In re Brunetti, No. 15-1109, Docket No. 60 (Fed. Cir. July 20, 2017). Without articulating why the federal trademark registration program is a limited public forum, the government’s letter brief analogizes trademark registration to city buses and a military cemetery. Id. at 14. At oral argument, the government identified the principal register as the limited public forum, which it contended is a metaphysical forum much like the forum at issue in Rpsenberger. Oral Arg. at 28:40-58.
The Supreme Court has found the existence of a limited public forum only when the government restricts speech on its own property. At one end of that spectrum are venues that are owned and controlled by government entities. See, e.g., Greer v. Spock,
While some of the Supreme Court’s limited public forum cases have involved forums that exist “more in a metaphysical than in a spatial or geographic sense,” these forums have nonetheless been tethered to government properties. See Rosenberger,
Because trademarks are by definition used in commerce, the trademark registration program bears no resemblance to these limited public forums. The speech that flows from trademark registration is not tethered to a public school, federal workplace, or any other government property. A principal feature of trademarks is that they help “consumers identify goods and services that they wish to purchase, as well as those they want to avoid.” Tam,
A snapshot of marks recently rejected under the immoral or scandalous provision reveals the breadth of goods and services impacted by § 2(a)’s bar on such marks, including speech occurring on clothing, books, websites, beverages, mechanical Contraptions, and live entertainment. These refusals chill speech anywhere from the Internet to the grocery store. And none of them involve government property over which the government can assert a right to.“legally preserve the property under its control for the use to which it is dedicated.” Lamb’s Chapel,
That registered, marks also appear on the government’s principal register does not transform trademark registration into a limited public forum. The government does not open the principal register to any exchange of ideas—it is ancillary to trademark registration. The principal register is simply a database identifying the marks approyed for use in commerce. Oral Arg. at, 29:28-41.- Apart from its function as a database, the government has been unable to define exactly what the principal register is, or where it is located. Id, at 29:34-64. If the government can constitutionally restrain the expression of private speech in commerce because such speech is identified in a government database, so too could the government restrain speech occurring on private land or in connection with privately-owned vehicles, simply because those private properties are listed in a database. Cf. Tam,
3. The Prohibition on the Registration of Immoral or Scandalous Trademarks Targets the Expressive Content of Speech and Therefore Strict Scrutiny Should Be Applied
Commercial speech is speech which does “no more than propose a commercial transaction.” Va. State Bd. of Pharmacy v. Va. Citizens Consumer Council, Inc.,
The test used by the PTO to prohibit immoral or scandalous marks is'whether a “substantial composite of the general public”
While different provisions of the Lan-ham Act may appropriately be classified as targeting a mark’s source-identifying information—for example, § 2(e)’s bar on registering marks that are “merely descriptive” or “geographically descriptive"—the immoral or scandalous provision targets a mark’s expressive message, which is separate and distinct from the commercial purpose of a mark as a source identifier. Justice Kennedy explained in his concurrence: “The central purpose of trademark registration is to facilitate source identification.... Whether a mark is disparaging bears no plausible relation to that goal.”
Section 2(a)’s bar on the registration of immoral or scandalous marks is unconstitutional even if treated as a regulation of purely commercial speech reviewed according to the intermediate scrutiny framework established in Central Hudson,
Commercial speech is subject to a four-part test which asks whether (1) the speech concerns lawful activity and is not misleading; (2) the asserted government interest is substantial; (3) the regulation directly advances that government interest; and (4) whether the regulation is “not more extensive than necessary to serve that interest.” Central Hudson,
The immoral or scandalous provision clearly meets the first prong of the Central Hudson test, which requires we first confirm the speech “concern lawful activity and not be misleading.”
Central Hudson’s, second prong, requiring a substantial government interest, is not met. The only government interest related to the immoral or scandalous provision that we can discern from the government’s briefing is its interest in “protecting public order and morality.” Gov’t Letter Br. 15 & n.6, In re Brunetti, No. 15-1109, Docket No. 60 (Fed. Cir. July 20, 2017).
First, the government does not have a substantial interest in promoting certain trademarks over others. The Supreme Court rejected the government’s claim that trademarks are government speech. Tam,
Second, Supreme Court precedent makes clear that the government’s general interest in protecting the public from marks it deems “off-putting,” whether to protect the general public or the government itself, is not a substantial interest justifying broad suppression of speech. “[T]he fact that society may find speech offensive is not a sufficient reason for suppressing it.” Hustler Magazine, Inc. v. Falwell,
The Supreme Court’s decision in Tam supports our conclusion that the government’s interest in protecting the public from off-putting marks is an inadequate government interest for First Amendment purposes. See, e.g.,
While the government’s interest in Tam related to a viewpoint-based restriction on speech, we note the cases on which the Supreme Court relied are not so limited. The cases cited in Tam are directed to speech that may be offensive, but not all involve speech that is disparaging or viewpoint discriminatory. Many involve speech that, rather than, disparaging others, involved peaceful, demonstrations. See, e.g., Bachellar v. Maryland,
Finally, the government does not have a substantial interest in protecting the public from scandalousness and profanities. The government attempts to justify this interest by pointing to the Supreme Court’s decision,in FCC v. Pacifica Foundation,
The government’s interest in protecting the public from profane and scandalous marks is not akin to the government’s interest in protecting children and other unsuspecting listeners from a barrage of swear words over the radio in Pacifica. A trademark is not foisted upon listeners by virtue of its being registered. Nor does registration make a scandalous mark more accessible to children. Absent any concerns that trademark registration invades a substantial privacy interest in an intolerable manner, the government’s interest amounts to protecting everyone, including adults, from scandalous content. But even when “many adults themselves would find the material highly offensive,” adults have a First Amendment right to view and hear speech that is profane and scandalous. Playboy,
Even if we were to hold that the government has a substantial interest in protecting the public from scandalous or immoral marks, the government could not meet the third prong of Central Hudson, which requires the regulation directly' advance the government’s asserted interest.
Finally, no matter the government’s interest, it cannot meet the fourth prong of Central Hudson, The PTO’s inconsistent application of the immoral or scandalous provision creates an “uncertainty [that] undermines the likelihood that the [provision] has been carefully tailored.” See Reno,
One commentator has written that, of the forty marks containing the acronym MILF for which written records were available as of 2011, twenty marks received an office action refusing registration based on § 2(a), while twenty did not. Anne Gilson LaLonde & Jerome Gilson, Trademarks Laid Bare: Marks That May Be Scandalous or Immoral, 101 Trademark Rep. 1476, 1478-82 (2011). It is difficult |» understand what distinguished the refused marks, which included GOT MILF (clothing), MILF MANIA (adult online services), MILF SEEKER (adult entertainment services), and FROM SOCCER MOM TO MILF (self-help books for women), from the marks which were registered including DIARY OF A MILF (adult online services), BACKROOM MILF (adult online services), FAT MILF (sandwich), and MILF NEXT DOOR (adult online services). Id. Another empirical study identified words that served as the basis of a § 2(a) refusal in some marks but were material components of other marks approved by the PTO. The authors found that to the extent there are general trends in the PTO’s treatment of the offensive terms, “those general trends are apparently inconsistent with one another.” Meghan M. Carpenter & Mary Garner, NSFW: An Empirical Study of Scandalous Trademarks, 33 Cardozo Arts & Ent. L.J. 321, 356-61 (2015). Even marks that reference the indisputably vulgar term “fuck,” like the mark at issue here, are not always rejected as a matter of course. The PTO registered the mark FCUK, but rejected the marks FUCT and F**K PROJECT as scandalous. It allowed the registration of MUTHA EFFIN BINGO, Reg. No. 4,183,272, and IF WE TOUCH IT, IT’S FN GOLDEN, Reg. No. 4,100,978, but not F ALL F’S APPAREL FOR THE F’N ANGRY, Appl. No. 78,420,315.
The Trademark Trial and Appeal Board has itself noted the vague and subjective nature of the scandalous inquiry. In re In Over Our Heads, Inc.,
We conclude that the government has not presented us with a substantial government interest justifying the § 2(a) bar on immoral or scandalous marks. As we concluded in Tam, “All of the government’s proffered interests boil down to permitting the government to burden speech it finds offensive.” Tam,
5. There Is No Reasonable Definition of the Statutory Terms Scandalous and Immoral Which Would Preserve Their Constitutionality
We construe statutes narrowly to preserve their constitutionality, when possible. See Schneider v. Smith,
The concurrence agrees that the scandalous and immoral prohibitions as construed by the government, this court, and our predecessor court are unconstitutional. This court and its predecessor have consistently defined “scandalous” 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.” Fox,
It is not reasonable to construe the words immoral and scandalous as confined to obscene material. There is no dispute that an obscene mark would be scandalous or immoral; however, not all scandalous or immoral marks are obscene. All apples are fruit, but not all
■ The Supreme Court has made clear that the definition of obscenity for purposes of the First Amendment is “material which deals-with sex in a manner appealing to prurient interest,” ie., “material having a tendency to excite lustful thoughts.” Roth v. United States,
Despite the concurrence’s suggestion to the contrary, none of the dictionary defini- ■ tions cited define “immoral” or “scandalous”- in sexual terms.
Unlike the terms “immoral”, and “scandalous,” the statutory terms at issue in the cases cited in the concurrence are by their' nature limited to material “which deals with sex.” See, e.g., Brockett v. Spokane Arcades, Inc.,
Conclusion
The trademark at issue is vulgar. And the government included an appendix in its briefing to the court which contains numerous highly offensive, even shocking, images and words for which individuals have sought trademark registration. Many of the marks rejected under § 2(a)’s bar on immoral or scandalous marks, including the marks discussed in this opinion, are lewd, crass, or even disturbing. We find the use of such marks in commerce discomforting, and aré not eager to see a proliferation of such marks in the marketplace. There are, however, a cadre of similarly offensive images and words that have secured copyright registration by the government. There are countless songs with vulgar lyrics, blasphemous images, scandalous books and paintings, all of which are protected under federal law. No doubt many works registered with the Copyright Office offend a substantial composite of the general public. There are words and images that we do not wish to be confronted with, not as art, nor in the marketplace. 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.
We hold'that the bar in § 2(a) against immoral or scandalous marks is unconstitutional because it violates the First Amendment. We reverse the Board’s holding that Mr. Brunetti’s mark is unregistra-ble under § 2(a).
REVERSED
Notes
. The government maintains that our en banc decision in' Tam is not binding on this pahel in light of the Supreme .Court’s decision in Tam. Oral Arg. at 12:23-13:36, 15:43-54. We question the force of this assertion because the Supreme Court did not reverse or otherwise cast doubt on the continuing validity of our government subsidy analysis and other aspects of oúr decision in Tam. See Chen v. Allstate Ins. Co.,
. Apart from the inconsistency of this argument with the government's previous representation in Tam—in which it stated it did not believe the forum analysis applied to trademark registration, and in particular that it did not "regard the register itself as a forum”— this argument fails as a legal matter. See Tam,
. The PTO justifies its refusals by. “tying censorship to the reaction of the speaker’s audience.” See Tam,
. The government’s brief also made an errant reference to its interest "in the orderly flow of commerce.” Gov’t Letter Br. 15, In re Brunetti, No. 15-1109, Docket No. 60 (Fed. Cir. July 20, 2017). While we do not question the sub-stantiality of this interest, the government has failed to articulate how this interest is in any way advanced by the immoral or scandalous prohibition, or how that provision is narrowly tailored to that interest.
. We note that the government hardly met its burden to identify a government interest at all. To identify this purported interest, the government has done no more than “taken the effect of the statute and posited'that effect as the State’s interest. If accepted, this sort of circular defense can sidestep judicial review of almost any statute, because it makes all statutes look narrowly tailored.” Simon & Schuster, Inc. v. Members of N.Y. State Crime Victims Bd.,
. Tjie PTO's inconsistent rejections under the immoral or scandalous provision also raise concerns about the provision’s vagueness. See Tam,
. With no authority, the concurrence suggests “the central aim of the immoral-scandalous provision ... has been sexual material.” Cone. Op. 1359-60. To the contrary, there is a long history of rejecting numerous categories of non-sexual material under this provision. See generally LaLonde & Gilson, supra, at 1510-14, 1517-33 (discussing the application of the provision to marks related to religion, drug references, violence, disparaging patriotic symbols, mild profanity, and scatological references). Moreover, the.concurrence suggests narrowing the immoral or scandalous provision to obscene material would be consistent with PTO action. The marks cited by the concurrence, like the FUCT mark at issue in this case, would not be properly refused under a prohibition limited to obscenity. See Cone. Op. 1360 n.7.
. The concurrence’s reliance on overlapping dictionary definitions of "immoral,” "scandalous,” and "obscene” ignores this important limitation. The question before us is not whether the, obscene material is "immoral” .and "scandalous,” but rather whether Congress intended the terms "immoral” or "scandalous” to be confined to material that is "obscene” for the purposes of a First Amendment analysis.
Concurrence Opinion
concurring in the judgment.
The majority today strikes down as unconstitutional a century-old provision- of the Lanham Act that prohibits the registration of “immoral .... orscandalous” marks. 15 U.S.C. § 1052(a). In doing so, it notes our obligation to “construe statutes narrowly to preserve their constitutionality, when possible.” Maj. Op. 1355. -It concludes, however, that there is no such reasonable narrow construction. Id. at 1365— 57. I' think that such a saving construction is possible and that we are ■ obligated to adopt it.
As an initial matter, I agree with the majority that the Supreme Court’s recent decision in Matal v. Tam, — U.S.-,
I think that we are obligated to construe the statute to avoid these constitutional questions. Courts must, “where possible, construe federal statutes so as ‘to avoid serious doubt of their constitutionality.’” Stern v. Marshall,
One such fairly possible reading is available to us here by limiting the clause’s reach to obscene marks, which are not protected by the First Amendment. Where the regulation of speech is concerned, the Supreme Court has a long history of narrowing the scope of similarly worded statutes to cover only obscene speech. The most prominent examples are the federal obscenity statutes. In 1896, the Supreme Court considered an early version of these laws, which criminalized the mailing of “obscene, lewd or lascivious” materials. Swearingen v. United States,
The obscenity statutes were later amended to include an even broader description of the targeted matter. Today, 18 U.S.C. § 1461 criminalizes the mailing of any “obscene, lewd, lascivious, indecent, filthy or vile article,” and § 1462 criminalizes the importation of “obscene, lewd, lascivious, or filthy” materials. Nonetheless, in a series of opinions in the 1960s and ’70s, the Supreme Court construed this broader language narrowly to apply only to obscenity in order to avoid constitutional doubts. See Hamling v. United States,
As the Supreme Court has done with the obscenity statutes, here when faced with constitutional doubt as to the immoral-scandalous provision, we should adopt a narrowing construction and limit the statute to obscenity.
Under these circumstances, we can appropriately narrow the immoral-scandalous provision’s scope to obscene marks in order to preserve its constitutionality, and we are obligated to do so.
* * *
The First Amendment does not protect obscene speech. E.g., United States v. Williams,
Because there is no suggestion that Mr. Brunetti’s mark is obscene, however, I agree that the decision of the Trademark Trial and Appeal Board must be reversed; For these reasons, I concur in the judgment.
, The majority states that I "agree[] that the scandalous and immoral prohibitions ... are unconstitutional.” Id. at 38,
. I am aware of only one case in which the Supreme Court declined to construe similar .language as limited to obscenity. FCC v. Pacifica Foundation,
. Of course, if this were a state rather than federal statute, the different standard for narrowing constructions might dictate a different result. See, e.g., Conchatta Inc. v. Miller,
. Our predecessor court noted that "the threshold for objectionable matter is lower for what can be described as ‘scandalous’ than for ‘obscene,’ ” which suggests that any marks meeting the threshold for obscenity would also be considered scandalous. In re McGinley,
. Immoral, Webster’s Collegiate Dictionary (1898); Immoral, Webster’s Complete Dictionary (1886). In addition, all three words were defined in terms of giving offense to morals, and "obscene” and "immoral” were specifically defined in opposition to chastity. Immoral, Webster’s Collegiate Dictionary ("inconsistent with good morals,” "unchaste”); Obscene, id, ("[offensive to chastity”); Scandalous, id. (‘‘[g]iving offense to the conscience or moral feelings”); Immoral, Black’s Law Dictionary (1st ed. 1891) ("[cjontrary to good morals”); Obscene, id. ("calculated to shock the moral sense of man by a disregard of chastity or modesty”); Immoral, Webster’s Complete Dictionary ("[n]ot moral,” "unchaste”); Obscene, id. ("[offensive to chastity and delicacy”); Scandalous, id. ("[gjiving offense”). Finally, "immoral” and "obscene” shared a number of other synonyms, including "lewd,” “impure,” and "indecent.” Immoral, Webster’s Collegiate Dictionary ("impure,” "lewd”); Obscene, id. ("indecent; impure; lewd”); Immoral, Webster's Complete Dictionary ("impure,” "lewd”); Obscene, id. (“[i]mpure,” "indecent,” "lewd”); Obscene, Black's Law Dictionary ("[ljewd; impure; indecent”).
.We are under this obligation notwithstanding the fact that the government has not advocated for such a narrowing construction. For example, in Spokane Arcades, the Supreme Court adopted a narrowing construction despite the state officials’ arguments that the statute was facially constitutional and not in need of narrowing.
. See In re Fox,
. See,- for example, Anne Gilson LaLonde & Jerome Gilson, Trademarks Laid Bare, 101 Trademark Rep. 1476, 1510-33 (2011), in which the'examples of recent rejections are predominantly sexual references.
. See, e.g., In re Riverbank Canning Co.,
. See id. at 1534 (noting that narrowing "immoral" and "scandalous” to "obscene” would ensure that the provision no longer applies to marks "at the edges of scandalousness"). ■