Every now and then, a court case on a mundane topic grabs the public’s attention simply because of its colorful facts. Most people do not care about the nuances of federal registration of trademarks, for example, but everyone perks up when they hear the Supreme Court is considering the registrability of the trademark FUCT, as happened in 2019 in Iancu v. Brunetti.
I want to revisit Brunetti and its predecessor Matal v. Tam here for two reasons. First, they provide an entryway for discussing the relationship between trademarks and consumer protection, in particular how courts view the consumer protection function of trademarks as secondary to commercial interests. Second, despite its colorful nature Brunetti was a mundane case, which can be more illuminating on the thinking of justices than “blockbuster” cases, particularly when it comes to matters of statutory and constitutional interpretation.
The Purpose of Trademarks
Trademarks date back to the Roman era, when traders around the Mediterranean marked their amphorae with a distinctive indication to show the source of origin of their goods, and smiths marked their swords to confirm their quality. In England, Parliament required all bakers to stamp their bread with distinctive marks in 1266. Some current breweries claim they have used core elements of their logos as early as the 14th century. Trademarks are therefore the oldest form of intellectual property.
But unlike patents and copyrights, which protect individual creative efforts, trademarks serve a very different purpose. As these ancient examples show, trademarks protect both the public by informing them of the source of origin and the sellers by providing a means to protect against counterfeiters. These functions go hand in glove: the seller wants to protect his reputation amongst his buyers, and the buyers want to know the goods they are buying have a consistent and known quality. Trademarks therefore serve a particular function: they protect the fairness of, and information exchange within, a marketplace. If buyers cannot be reasonably certain of the origin of their goods, the market breaks down.
A trademark, then, is a symbol in the semiotic sense: an intelligible referent conveying an intangible sense of quality, source of origin, and consumer expectations (what trademark lawyers call “good will”). The word ADIDAS has no meaning apart from the fact that it is the symbolic referent for a major soccer ball and gear manufacturer. The consumer associates with ADIDAS a sense of the quality of the product and its overall brand. And of course, this association is not limited to words: Letters, jingles, graphical designs, colors, even smells act as trademarks.
In contrast, words chosen to convey specific, express messages may not be protectable as marks at all. First, words descriptive of a good or service in some way receive only minimal protection, and generic words receive none at all. This is because other sellers may need to use those words to describe their product or source of origin. (For example, if I refer to a geographically descriptive trade name such as the “Nashville Guitar Company,” do I mean some random guitar seller in Nashville, a company by that specific name, or Gibson Brands, Inc.?) Second, the public may understand such expressive words to convey an informational or other message rather than serve as a trademark designating a source of origin. For example, the United States Patent & Trademark Office (USPTO) has rejected applications to register ONCE A MARINE, ALWAYS A MARINE for clothing, or THINK GREEN for weatherstripping—these marks convey information to the consumer, not the source of origin. Third, a design that is merely ornamental is not a protectable trademark. No one for example, associates a particular producer as the source of shirts reading I ♥ NY. Rather, the mark must be used to convey the source of origin of the product. Typically, this means use in a manner consistent with consumer expectations regarding the goods. Two common examples are a small design (such as the LACOSTE crocodile) on the right chest area of a shirt to designate the apparel brand, or the application of the company name or brand to the neck tag.
The Lanham Act of 1946 created the federal trademark registration system. The Lanham Act bars registration of generic marks as well as “marks” that are only informational or ornamental. It also raises the bar for registration of certain types of marks, including those that are descriptive. Finally Section 2(a) of the Lanham Act bars registration of a mark that “consists of or comprises immoral … or scandalous matter; or matter which may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…” (emphasis added). It is this section that brings us to Brunetti and Tam.
The Brunetti and Tam Cases
Brunetti is a simple and eye-catching case. Erik Brunetti sells t-shirts and other apparel with the word FUCT prominently emblazoned on them. (He not very credibly claims this is an acronym for “Friends You Can Trust.”) He also puts the word on the tag of the shirt (to satisfy the trademark use requirement). Brunetti then applied to register FUCT, but the USPTO denied registration on the grounds that the mark contained “immoral or scandalous matter.” (You should be aware that in practice, the USPTO treated “immoral or scandalous matter” as a single unified standard, and the courts followed that practice in interpreting the clause.)
The Federal Circuit reversed, declaring that the bar on registering “immoral or scandalous matter” violated Brunetti’s free speech rights. The Federal Circuit’s reasoning relied on the 2017 Supreme Court decision Matal v. Tam, in which Justice Alito,1 writing for a unanimous 8-0 Court, struck down the bar against “disparaging” trademarks as targeting the speech content of a trademark owner’s mark, therefore constituting impermissible viewpoint discrimination under the First Amendment. This permitted Simon Tam to register THE SLANTS, the name of his all-Asian-American music band. Justice Alito suggested the bar on “disparaging” marks was viewpoint discriminatory and presumptively unconstitutional. But he sidestepped the question of whether trademarks constituted expressive or commercial speech by holding in the alternative that the disparagement clause, directed as it was to disparagement of any “persons, living or dead, institutions, beliefs, or national symbols,” was not even narrowly drawn as required by intermediate scrutiny (which applies to commercial speech). It also avoided having to decide whether the disparagement clause properly applied to a mark clearly selected to be an ironic attempt to “reclaim” the use of the anti-Asian slur by the community it targets.
The government appealed Brunetti to the Supreme Court, but in a 6-3 decision, the Court affirmed the Federal Circuit. Writing for the majority, Justice Kagan (joined by Ginsburg, Thomas, Alito, Gorsuch, and Kavanaugh) followed the Tam case by holding the bar on “immoral or scandalous matter” constituted viewpoint discrimination.2 Unlike in Tam, the Court did not even consider whether Brunetti’s mark was commercial speech entitled to only intermediate scrutiny, and whether the statute could be saved in that manner. Justice Alito penned a brief solo concurrence stating that as written the statute was viewpoint discriminatory, but that a more narrowly tailored statute targeting vulgar modes of expression could pass muster. Chief Justice Roberts and Justices Breyer and Sotomayor each separately dissented but broadly agreed that while the “immoral” standard was viewpoint discriminatory, the “scandalous” standard could be understood as targeting modes of expression and was constitutional.
For the remainder of this post, I will focus on two trademark-specific questions: First, is Brunetti’s mark properly within the scope of the First Amendment protection at all? And second, even if we were to consider trademarks as “expressive speech” within the scope of the First Amendment, what level of scrutiny should the bars to registration receive?
Are Naughty Words Really Acting As Trademarks?
In the debates preceding and following the Brunetti decision, I do not recall anyone raising this question, but I think it is worth asking. Return to what trademarks are for—the protection of consumers and the guarantee of brand quality. As symbols, trademarks do “communicate” to consumers, but not by virtue of any express words in the mark. Rather, they communicate the sense of “good will.” We know what to expect when we purchase ADIDAS shoes or COCA-COLA soda, and they are different expectations from NIKE shoes and PEPSI.
Brunetti surely didn’t choose the trademark FUCT because it communicated the quality of the brand—he just wanted to put a misspelled naughty word on a shirt for all to see. But then, that’s not really a trademark, is it? That’s an aesthetic or ornamental quality of the shirt. Yes, Brunetti also put FUCT on the shirt tag to meet trademark usage requirements, but there is no doubt he is relying on the startling character of the word to draw attention. That’s ornamental use, not trademark use.
With that distinction of trademark use versus informational or ornamental use in mind, consider these examples of barred applications in Justice Kagan’s opinion: YOU CAN’T SPELL HEALTHCARE WITHOUT THC for medication; MARIJUANA COLA and KO KANE for beverages; the infamous BONG HITS 4 JESUS (from a prior Supreme Court First Amendment case); and BABY AL-QAEDA and AL-QAEDA on t-shirts. The sense in each case (with the possible exception of MARIJUANA COLA, which could just be descriptive of the product) is that the applicant was really trying to express an informational message or use the “mark” as an ornament, rather than use the mark as a trademark. Justice Kagan’s hypothetical marks HATE RULES and ALWAYS BE CRUEL are also similarly expressive, suggesting that she has misunderstood the function of trademarks.
This conforms with my experience as a practicing attorney. Most often, a mark used on everyday goods that might qualify as “immoral or scandalous” is selected to convey an expressive or ornamental message, not to function as a trademark. In some cases, the shocking nature of the mark obliterates whatever trademark sense the mark might have. Thus, the “immoral or scandalous” bar acts as a proxy for other trademark concerns, not as a restriction on free speech generally, and the government is right to reject them as trademarks.
Even If Trademarks Are Speech, What First Amendment Standards Should Apply?
Given the above, I have concerns that the First Amendment is not really even applicable to trademarks. But even if one agrees that trademarks should be treated as speech protectable under the First Amendment, what standards should apply? This is where the jurisprudential drift from Tam to Brunetti is concerning.
In Tam, the Court held that the “disparagement” bar was viewpoint discrimination, but it at least considered whether trademarks were commercial speech and made an alternative holding, without deciding the question regarding commercial speech. In Brunetti, the Court did not even get to the question of commercial speech at all with respect to “immoral and scandalous” marks.
But trademarks are not even simply commercial “advertising” speech. They serve a very particular, market-protecting function. Trademarks are used in connection with advertising, but the mark itself designates something else, that nebulous concept of “good will” that captures consumer expectations and notions of quality and source. That is, the trademark serves to protect the actors (both consumers and vendors) in the marketplace. If a consumer cannot be certain of the source and quality of goods in the market, what is the use of the market anyways?
The law recognizes that certain speech is not protected in various contexts specifically because the messages the speech conveys is inescapably linked to the protection of the public. To go to the cliché, one may not shout “Fire!” in a crowded theater absent an actual fire because of the concern for public safety. These are words that may only be used in certain contexts, precisely because they have a broader social purpose. Analogously, because trademarks serve to protect the operation of the market, the government should have a freer hand in regulating their content. I don’t mean to suggest that trademarks meet the “clear and present danger” test that the prohibition on shouting “Fire!” does, but a public interest does exist in maintaining a marketplace of a generally accurate and commercial character. There is no reason the government should be required to allow or encourage vulgar marks in the marketplace, but Brunetti does exactly that.
I especially think that’s the case where the law being scrutinized is not a criminal statute or civil penalty, but rather a conferral of a government benefit. The Court in both cases took a dim view of this distinction on the basis that denial of a benefit can have the same effect as a penalty in acting to favor one type of speech over another, and indeed neither the strict scrutiny, intermediate scrutiny, nor rational basis standards look at the nature of the government imposition of speech at all. But to treat a denial of trademark registration the same as arresting people protesting outside the mayor’s house (as in Gregory v. City of Chicago) strikes me as an unwarranted equivalence of the harms caused.
In short, assuming the First Amendment does extend to trademarks, I think the trademark registration bars should be subject to the rational basis standard, and certainly no more than intermediate scrutiny. Furthermore, when considering the scope of the government interest under these standards, the government interest in protecting the operation of the marketplace should have been granted more import than the government interests considered in Tam. In short, the government grants greater protection of asserted free speech rights or private commercial interests over the operation of the communal market.
In a future post, I’ll turn to how Brunetti and Tam illuminate broader questions about statutory construction within the context of originalism, living constitutionalism and the common good as various jurisprudential theories of law.
Jake Neu
- Justice Gorsuch was not yet confirmed when Matal v. Tam was heard.
- Because Brunetti challenged the statute as facially unconstitutional, the question was not whether his mark FUCT was immoral or scandalous or even conveyed expressive speech—it was whether the statute would apply to any such mark, regardless of its substantive message. Brunetti attached to his brief an appendix of vulgar registrations that had been either granted or refused. Among others, the USPTO had rejected as “immoral or scandalous” applications for FUCK CANCER and DON’T BE AN AHOLE!, expressions of which most people would probably agree with the sentiment, if not the mode.