In re: Erik Brunetti

Docket No. 2015-1109

December 15, 2017

Brief Summary: FC panel reversed PTAB’s affirmance of “the examining attorney’s refusal to register the mark FUCT” for apparel “because it comprises immoral or scandalous matter under 15 U.S.C. § 1052(a) (‘§ 2(a)’)” since “the disparagement provision of § 2(a) is unconstitutional under the First Amendment” (Tam, FC 2015/US 2016).

Summary: Erik Brunetti appealed PTAB affirmance of “the examining attorney’s refusal to register the mark FUCT” for apparel “because it comprises immoral or scandalous matter under 15 U.S.C. § 1052(a) (‘§ 2(a)’)”. This opinion explains that “[t]he examining attorney reasoned that FUCT is the past tense of…a vulgar word, and is therefore scandalous” and the PTAB stated that mark was used by Mr. Brunetti “in the context of ‘strong, and often explicit, sexual imagery that objectifies women and offers degrading examples of extreme misogyny”, its use “will be perceived by his targeted market segment as the phonetic equivalent” of the word referred to by the examining attorney, and therefore concluded it “is vulgar and therefore unregisterable”. The FC panel found the PTAB “did not err in concluding the mark comprises immoral or scandalous matter” but also concluded that § 2(a)’s bar on such marks “is an unconstitutional restriction of free speech”, and therefore reversed. The FC panel explained that “[b]ecause the scandalousness determination is made in the context of contemporary attitudes, the concept of what is actually immoral or scandalous changes over time” (In re Fox, FC 2012). It also explained that “the PTO may prove scandalousness by establishing that a mark is ‘vulgar’” (Fox) and the PTAB’s conclusion on this point to be supported by substantial evidence. This opinion also explained that “[w]hen Mr. Brunetti filed his appeal, his constitutional argument was foreclosed by binding precedent” (McGinley, CCPA 1981). In its 2015 en banc In re Tam decision (affirmed by SCOTUS (US 2016)), the FC “held the disparagement provision of § 2(a)” to be “unconstitutional under the First Amendment because it discriminated on the basis of content, message, and viewpoint” by focusing on “the expressive character of marks, not their commercial purpose” and “subject to strict scrutiny” (Sorrel, US 2011) (and would not “survive intermediate scrutiny” either (Central Hudson, US 1987)). Acknowledging it “find[s] the use of such marks in commerce discomforting” and “not eager to see a proliferation of such marks in the marketplace”, it also explained that “[t]he First Amendment…protects private expression, even private expression which is offensive to a substantial composite of the general public” and, therefore reversed the PTAB’s decision. Judge Dyk concurred but wrote that § 2(a) could be read in way that preserves its constitutionality (Stern, US 2011) (e.g., “limiting the clause’s reach to obscene marks, which are not protected by the First Amendment”).

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