As many long-time readers know, Section 2(a) of the Trademark Act is one of my pet peeves. This is the section of the Trademark Act that gives pretty much unfettered discretion to a trademark examiner to deny a trademark registration on the basis that the mark itself is “immoral” or “scandalous.” The Federal Circuit just decided In Re Fox, in which it reaffirmed some very bad law, and in which it lacked the integrity to address some Constitutional fictions upon which most 2(a) denials are based.
“[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it (a) [c]onsists of or comprises immoral, deceptive, or scandalous matter.” 15 U.S.C. § 1052.
One of the most absurd elements of a 2(a) denial is that the evidentiary standard is so open to abuse. An examiner may prove “immorality” or “scandalousness” by simply establishing that the mark is “vulgar.” In re Boulevard Entm’t, Inc., 334 F.3d 1336, 1340 (Fed. Cir. 2003). Essentially, if the examiner finds a single online dictionary or chat board where someone says “that’s vulgar,” then that is usually enough for the examiner, the TTAB, and the Federal Circuit.
So, another 2(a) denial is just a “ho hum” event. But, this portion of the opinion shows just how little respect the Federal Circuit has for Constitutional issues. I mean, come on guys, at least try and make it look like you didn’t just mail it in.
The prohibition on “immoral . . . or scandalous” trademarks was first codified in the 1905 revision of the trademark laws, see Act of Feb. 20, 1905, Pub. L. No. 58- 84, § 5(a), 33 Stat. 724, 725. This court and its predeces- sor have long assumed that the prohibition “is not an attempt to legislate morality, but, rather, a judgment by the Congress that [scandalous] marks not occupy the time, services, and use of funds of the federal government.” In re Mavety Media Grp. Ltd., 33 F.3d 1367, 1374 (Fed. Cir. 1994) (quotation marks omitted). Because a refusal to register a mark has no bearing on the applicant’s ability to use the mark, we have held that § 1052(a) does not implicate the First Amendment rights of trade- mark applicants. See id. (Op. at 2)
I find it outrageous not just because the court is wrong, but because the court was so glib and dismissive of the First Amendment.
Trademarks propose a commercial transaction; speech that proposes a commercial transaction is “commercial speech” and thus subject to First Amendment protection. Virginia State Bd. Of Pharmacy v. Virginia Citizens Consumer Council, 425 U.S. 748, 762 (1976). Trademarks convey messages about the type, cost and quality of the product or service associated with the mark. See Friedman v. Rogers, 440 U. S. 1, 11 (1979). The trademark is a tightly targeted bit of expressive activity that seeks to persuade a potential customer to choose one product over another, either due to the identification of goods or to the communicative element of the trademark itself.
Thus far, all USPTO decisions regarding the constitutionality of Section 2(A) rely upon the improperly decided case In re Robert L. McGinley, 660 F.2d 41 (Fed Cir. 1981).
McGinley is where we get the idea that since trademark applicants are still free to use the trademarks, then there is no abridgment of speech if your trademark is denied registration due to its content. However, this reasoning is simply shoddy and contrary to a body of First Amendment jurisprudence. For example, in striking down New York’s “Son of Sam” law, which prohibited criminals from profiting from writing books about their crimes, the Supreme Court held “[a] statute is presumptively inconsistent with the First Amendment if it imposes a financial burden on speakers because of the content of their speech.” Simon & Schuster v. New York State Crime Victims Bd., 502 U.S. 105, 115 (1991). In the Son of Sam case, the authors were still free to write, but were denied the financial benefits of their labors. That was the end of that law. This appears to completely dispense with the McGinley reasoning.
Bad Frog Brewery, Inc. v. New York States Liquor Authority, 134 F.3d 87 (2d Cir. 1998) analyzed a similar issue. In that case, the appellant sought to use a trademark of a frog giving the finger. The Second Circuit held that since trademarks are commercial speech, prohibition on use of so-called “offensive” trademarks did not advance the stated governmental purpose of protecting children from vulgarity or promoting temperance, nor was it narrowly tailored to serve that purpose. Not binding on the Fed. Cir., but I think that the Fed. Cir. is the wrong place to challenge McGinley. There is no indication that the Fed. Cir. will ever admit that it was wrong in McGinley, and every time it gets a chance, it doubles down.
Finally, there can be no clearer authority for the death of Section 2(a) than Lawrence v. Texas. (“The fact a State’s governing majority has traditionally viewed a particular practice as immoral is not a sufficient reason for upholding a law prohibiting the practice.”)
“Morality” is not a valid reason to confer or deny a governmental benefit – instead the government must articulate a reason why registration of a mark might be harmful, and then apply that reason to the particular circumstances at hand, in a narrow manner. The government has done none of this in this case, nor in any other 2(a) denial.
2(a) Delendum Est!
[…] “immoral or scandalous.” John Welch and Marc Randazza address the issue brilliantly here and […]
Err, if all potential trademarks are commercial speech protected by the first ammendment, doesn’t that just show that you can’t enforce trademark usage?
I have no idea what you’re talking about.
Is the issue that this is a benefit, not a punishment? The government is clearly discriminating against speakers–no doubt. And in practical terms, that discrimination and the denial of the benefit amounts to something like a punishment.
But it is not, in the land of legal fictions, prohibiting or punishing commercial speech. There’s no fee to using the mark, so the “you gotta pay before you can talk” cases can be distinguished. They do not fine or imprison someone for using the mark, so Lawrence is distinguished. The government just denies a special benefit. It’s douchbaggery and an end run on the freedom of speech and of the press, but the federal courts have always been leery of compelling the government to grant a benefit, as opposed to restraining the government from punishing someone. I think the line between “not compelling” and “restraining” the government becomes artificial at a certain point, but this leeriness by the courts to compel the granting of a benefit is not isolated to First Amendment jurisprudence (Miranda, Gideon and fundamental rights EPC being some notable exceptions).
Do I agree with you? Absolutely. It’s content–and let’s be honest–viewpoint discrimination. And it’s dumbfuck policy. Do I follow the legal logic? Yeah, unfortunately, although it is probably more accurate to call it legal fiction.
Okay, so during my commute it occured to me that a better case might be RAV v. St. Paul, 505 US 377 (1992). It’s a longshot, I confess. I’m sure you know the case, but because other readers may not, in RAV SCOTUS said that restrictions on fighting words were okay–but not when those restrictions are based on viewpoint discrimination. Specifically, the court held that “[t]he government may not regulate use based on hostility—or favoritism—towards the underlying message expressed.” Id. at 386.
Under RAV, that’s true even where the speech is fundamentally unprotected by the First Amendment, which is kind of nutty. In RAV, the court skipped straight to viewpoint discrimination, and passed the usual first step of, “is this even protected by the First Amendment?”
It seems to me that there may be similarities between RAV and your cases. In my very limited understanding of Trademark law, it seems to me that the law of trademarks permits the punishment of individuals for certain unprotected speech–not speech of your clients, but the people from whom your clients seek to have their marks protected. It seems to me that under RAV, as St. Paul did through its ordinance prohibiting certain fighting words and not others in order to protect certain groups, the Trademark office cannot dole out protections and punishments in a manner that is viewpoint discriminatory–even when dealing with speech that ordinarily falls outside of First Amendment protections.
Unfortunately, language at 388 is particularly unhelpful, specificaly affirming content-based discrimination on the basis of “purience.” Also, your clients are in a different position than the challengers in RAV–your clients are like an Italian guy who challenges the law in RAV because the challenged statute doesn’t prohibit “dago” or “wop.” Even so, depending on the facts of a given claim, which I do not know enough about given your post, perhaps you can tease out a viewpoint claim . . . .
There’s a good equal protection argument as to why it’s not simply a benefit. A registered trademark provides its owner a presumption of validity (not as strong as that of a patent, but not nothing) as well as evidence of use in court proceedings. A putative owner of a mark who is denied such evidence due to the mere preferences of Congress is therefore in an unequal position with respect to their treatment in federal court, as opposed to a mark owner whose speech Congress approves of (or is at least silent on).
The constitution does not in my view abide the disparate treatment of two similarly situated litigants merely due to moral approbation of the content of their speech.
You should right a book about this topic, entitled “Vulgarians At The Gate” . . .
Oh, that’s write, the U.S. Constitution is subject to summary judgement, whenever necessary “to protect the children” . . .
We mustn’t forget about the children . . .
Marc, you should right a book about this topic, entitled “Vulgarians At The Gate” . . .
Oh yeah, that’s write, the U.S. Constitution is subject to summary judgement, whenever necessary “to protect the children”. We mustn’t forget about the children . . .
What, pray tell, will become of our children, should they see the word COCKSUCKER with a ™, ®, or worse still, a ℠ next to it?? . . .
[…] -Federal Trademark Registration remains available only to those of innocent mind and pristine speech. It’s a good thing, because I can think of no better arbiter of human morality than the USPTO. [The Legal Satyricon] […]