IN the SUPREME COURT of the UNITED STATES No

IN THE SUPREME COURT OF THE UNITED STATES

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No. 18A15

ANDREI IANCU, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR, UNITED STATES PATENT AND TRADEMARK OFFICE, APPLICANT

ERIK BRUNETTI

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APPLICATION FOR A FURTHER EXTENSION OF TIME WITHIN WHICH TO FILE A PETITION FOR A WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

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Pursuant to Rules 13 and 30.2 of the Rules of this Court, the

Solicitor General, on behalf of Andrei Iancu, Under Secretary of

Commerce for Intellectual Property and Director, United States

Patent and Trademark Office, respectfully requests a further extension of time, to and including September 7, 2018, within which to file a petition for a writ of certiorari to review the judgment of the United States Court of Appeals for the Federal Circuit in this case. The opinion of the court of appeals (App., infra, 1a-

32a) is reported at 877 F.3d 1330. The court of appeals entered its judgment on December 15, 2017. A petition for rehearing was denied on April 12, 2018 (App., infra, 33a-34a). On July 5, 2018, the Chief Justice extended the time within which to file a petition

2 for a writ of certiorari to and including August 10, 2018. The jurisdiction of this Court would be invoked under 28 U.S.C.

1254(1).

1. A trademark is a “word, name, symbol, or device” used by a person “to identify and distinguish his or her goods” in commerce and “to indicate the source of the goods.” 15 U.S.C. 1127.

Trademarks have been protected by the common law and in equity dating back to the founding, and that protection continues today through the common law and statutes of many States. Matal v. Tam,

137 S. Ct. 1744, 1751 (2017). Federal law, however, provides an additional layer of trademark protection. Id. at 1751-1752. Since

1946, that federal protection has been provided through the Lanham

Act, 15 U.S.C. 1051 et seq. Tam, 137 S. Ct. at 1752; see Act of

July 5, 1946, ch. 540, 60 Stat. 427.

The Lanham Act authorizes registration of trademarks that are

“used in commerce” and meet certain criteria. 15 U.S.C.

1051(a)(1); see 15 U.S.C. 1052. Although federal registration is not required either to use a mark in commerce or to enforce it under state or federal law, federal registration provides several additional benefits to trademark owners. Inter alia, a registered trademark provides nationwide constructive notice of the registrant’s claim of ownership and prima facie evidence of the mark’s validity. See 15 U.S.C. 1057(b), 1072.

This case concerns the constitutionality of one of the criteria for federal trademark registration -- namely, that the mark not “[c]onsist[] of or comprise[] immoral * * * or scandalous matter.” 15 U.S.C. 1052(a). Although that bar to registration is phrased in the disjunctive, the United States

Patent and Trademark Office (USPTO) has long construed it to create a single prohibition. To determine whether that bar applies to a particular mark, the USPTO asks whether a “‘substantial composite of the general public’ would find the mark scandalous.” App., infra, 7a (citation omitted). The USPTO generally defines

“scandalous” as “‘shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience of moral feelings; . . . or calling out for condemnation.’” Ibid. (citation omitted). The agency understands the term to include “[v]ulgar” marks, i.e., those

“‘lacking in taste, indelicate, [and] morally crude.’” Ibid.

(citation omitted; brackets in original).

2. In 2011, respondent Erik Brunetti attempted to register the trademark “FUCT” for a clothing brand that he had founded in

1990. App., infra, 8a. The examining attorney at the USPTO refused respondent’s application, finding that the mark is scandalous and immoral. Ibid. The USPTO’s Trademark Trial and

Appeal Board (Board) affirmed. Ibid. The Board observed that respondent used the mark in connection with apparel and promotional

4 material displaying “strong, and often explicit, sexual imagery that objectifies women and offers degrading examples of extreme misogyny.” Ibid. (citation omitted). It found that respondent’s use of the mark would “be perceived by his targeted market segment” as the obscene word for which it is a homonym. Ibid. (citation omitted). On that basis, the Board concluded that the mark was vulgar and therefore unregistrable under 15 U.S.C. 1052(a). Ibid.

Respondent appealed the Board’s decision to the United States

Court of Appeals for the Federal Circuit. He argued, inter alia, that the prohibition on registering scandalous marks is facially unconstitutional under the First Amendment. While the appeal was pending, this Court decided Matal v. Tam, supra, concerning the constitutionality of the Lanham Act’s separate prohibition on registering marks that “disparage * * * persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute,” 15 U.S.C. 1052(a), commonly known as the disparagement clause. In Tam, this Court held that the disparagement clause was facially invalid under the First

Amendment, but no single rationale commanded a majority. See

137 S. Ct. at 1751.

3. Following supplemental briefing and argument in this case, the court of appeals held that the scandalous-marks provision is also facially invalid under the First Amendment. App., infra,

11a-28a. The court described the provision as a “content-based

5 restriction on speech” subject to strict scrutiny under the First

Amendment. Id. at 13a. The court rejected each of the government’s arguments that the criteria for obtaining the benefits of federal trademark registration should not receive the same First Amendment scrutiny that would apply to a prohibition on speech. Id. at 13a-28a.

First, the court of appeals found that the provision could not be justified as a condition on a government program because trademark registration is not the equivalent of a cash subsidy and does not otherwise implicate Congress’s power under the Spending

Clause. App., infra, 13a-16a. Next, it held that trademark registration is not analogous to a limited public forum because the Principal Register, containing all federally registered trademarks, is neither physical government property nor “tethered to” any physical government property. Id. at 18a; see id. at 16a-

19a. Finally, the court rejected the government’s argument that the provision could be upheld under intermediate scrutiny as a restriction on commercial speech. Id. at 19-26a.

Judge Dyk filed a separate concurring opinion. App., infra,

28a-32a. He explained that, rather than resolving the difficult

First Amendment questions addressed by the panel majority, he would construe the scandalous-marks provision to prohibit the registration of only obscene marks. Ibid. Because there was no

6 contention that respondent’s mark is obscene, Judge Dyk concurred in the judgment reversing the USPTO’s decision. Id. at 32a.

4. The Solicitor General is still considering whether to file a petition for a writ of certiorari in this case. The further extension of time sought in this application is needed to permit further consultation with the Department of Commerce and the USPTO, as well as with other components within the Department of Justice.

A further extension of time is also needed, if a petition is authorized, to permit its preparation and printing.

Respectfully submitted.

NOEL J. FRANCISCO Solicitor General

JULY 2018

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federal law,’’ id., does not immunize state (1) substantial evidence supported Board’s law claims in other types of cases from determination that mark ‘‘FUCT’’ was ordinary principles of preemption. As dis- vulgar; cussed supra, the preemption analysis (2) prohibition on registration of immoral here demonstrates that Amgen’s state law and scandalous marks did not advance claims conflict with the BPCIA and in- a substantial government interest; and trude upon a field, biosimilar patent litiga- (3) court would not adopt narrowing con- tion, that Congress reserved for the feder- struction of ‘‘immoral’’ and ‘‘scandal- al government. ous.’’ We have considered Amgen’s remaining Reversed. arguments but find them to be unpersua- Dyk, Circuit Judge, wrote concurring opin- sive. ion.

CONCLUSION 1. Trademarks O1072 For the foregoing reasons, we affirm the To determine whether a mark should dismissal of Amgen’s unfair competition be disqualified under ‘‘immoral and scan- and conversion claims. Amgen’s state law dalous’’ provision of Lanham Act, the Pat- claims are preempted on both field and ent and Trademark Office asks whether a conflict grounds. substantial composite of the general public AFFIRMED would find the mark ‘‘scandalous,’’ defined as shocking to the sense of truth, decency, COSTS or propriety, disgraceful, offensive, disrep- Each party shall bear its own costs. utable, giving offense to the conscience or moral feelings, or calling out for condemnation. Lanham Trade-Mark Act § 2, 15 U.S.C.A. § 1052(a). , See publication Words and Phrases for other judicial constructions and definitions. 2. Trademarks O1072 In determining whether a mark IN RE: Erik BRUNETTI, Appellant should be disqualified under ‘‘immoral and 2015-1109 scandalous’’ provision of Lanham Act, the Patent and Trademark Office may prove a United States Court of Appeals, mark is ‘‘scandalous’’ by establishing that Federal Circuit. it is vulgar. Lanham Trade-Mark Act § 2, 15 U.S.C.A. § 1052(a). Decided: December 15, 2017 See publication Words and Phrases Background: Trademark applicant ap- for other judicial constructions and pealed decision of Trademark Trial and definitions. Appeal Board denying his application to 3. Trademarks O1072 register mark ‘‘FUCT’’ because it com- ‘‘Vulgar marks,’’ which can be disqual- prised immoral or scandalous matter. ified under ‘‘immoral and scandalous’’ pro- Holdings: The Court of Appeals, Moore, vision of Lanham Act, are lacking in taste, Circuit Judge, held that: indelicate, and morally crude. Lanham

(1a) 2a

IN RE BRUNETTI 1331 Cite as 877 F.3d 1330 (Fed. Cir. 2017)

Trade-Mark Act § 2, 15 U.S.C.A. might accept as adequate to support a § 1052(a). conclusion. See publication Words and Phrases See publication Words and Phrases for other judicial constructions and for other judicial constructions and definitions. definitions. 9. Trademarks O1072 4. Trademarks O1072 Substantial evidence supported The Patent and Trademark Office Trademark Trial and Appeal Board’s de- makes a determination as to whether a termination that mark ‘‘FUCT’’ was vulgar mark is scandalous, and thus may be dis- and therefore scandalous under ‘‘immoral qualified under ‘‘immoral and scandalous’’ and scandalous’’ provision of Lanham Act, provision of Lanham Act, in the context of where ‘‘fuct’’ was a phonetic twin of contemporary attitudes and in the context ‘‘fucked,’’ which was the past tense of the of the marketplace as applied to only the undisputedly vulgar work ‘‘fuck,’’ evidence goods described in the application. Lan- of use of mark in the marketplace on ham Trade-Mark Act § 2, 15 U.S.C.A. products containing sexual imagery fur- § 1052(a). ther demonstrated a link between the mark and the word ‘‘fuck’’ and the fact O 5. Trademarks 1072 that consumers perceived the mark as For purpose of determining whether a having an unmistakable aura of negative mark may be disqualified under ‘‘immoral sexual connotations, and highest rated def- and scandalous’’ provision of Lanham Act, inition on website providing colloquial defi- the concept of what is actually immoral or nitions suggested definition of ‘‘fuct’’ as scandalous changes over time. Lanham the past tense of the verb ‘‘fuck’’ was more Trade-Mark Act § 2, 15 U.S.C.A. common and accurate than alternative, § 1052(a). non-vulgar definitions. Lanham Trade- Mark Act § 2, 15 U.S.C.A. § 1052(a). 6. Trademarks O1312 10. Trademarks O1072 The determination that a mark is In determining whether a mark is im- scandalous under ‘‘immoral and scandal- moral or scandalous, the pedigree of the ous’’ provision of Lanham Act is a conclu- author of a definition may affect the sion of law based upon underlying factual weight that evidence is given but does not inquiries. Lanham Trade-Mark Act § 2, render the definition irrelevant. Lanham 15 U.S.C.A. § 1052(a). Trade-Mark Act § 2, 15 U.S.C.A. § 1052(a). 7. Trademarks O1322 11. Trademarks O1309, 1310 The Court of Appeals reviews the Trademark Trial and Appeal Board’s fac- In determining whether a mark is im- tual findings for substantial evidence and moral and scandalous, the ages of the im- its ultimate conclusion de novo. ages using the mark collected by the examining attorney may affect evidentiary 8. Trademarks O1322 weight, not relevance. Lanham Trade- Mark Act § 2, 15 U.S.C.A. § 1052(a). ‘‘Substantial evidence’’ supporting the Trademark Trial and Appeal Board’s deci- 12. Constitutional Law O1517 sion is more than a mere scintilla and such A statute is content-based, and thus relevant evidence as a reasonable mind presumptively invalid under First Amend- 3a

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ment, when a law applies to particular limits of the government spending pro- speech because of the topic discussed or gram and conditions that seek to leverage the idea or message expressed. U.S. funding to regulate speech outside the con- Const. Amend. 1. tours of the program itself. U.S. Const. 13. Constitutional Law O1518 art. 1, § 8, cl. 1, Amend. 1. To survive First Amendment free 18. Constitutional Law O1604 speech scrutiny, content-based statutes O must withstand strict scrutiny review, United States 315(1) which requires the government to prove Trademark registration does not im- that the restriction furthers a compelling plicate Congress’s power under Spending interest and is narrowly tailored to achieve Clause to control the use of government that interest. U.S. Const. Amend. 1. funds, and thus is not a government subsi- 14. Constitutional Law O1518 dy, for purpose of determining the extent Strict scrutiny applies to content- of Congress’s power to attach conditions to based statutes whether the statute bans or the use of its funds in relation to First merely burdens protected speech. U.S. Amendment Free Speech Clause. U.S. Const. Amend. 1. Const. art. 1, § 8, cl. 1; Lanham Trade- Mark Act § 2, 15 U.S.C.A. § 1052(a). 15. United States O314(1) Within Congress’s Spending Clause 19. Constitutional Law O1730 discretionary power to tax and spend for the general welfare is the authority to The constitutionality of speech restric- attach certain conditions to the use of its tions on government property are analyzed funds to ensure they are used in the man- under the Supreme Court’s forum analysis, ner Congress intends. U.S. Const. art. 1, which determines when a governmental § 8, cl. 1. entity, in regulating property in its charge, may place limitations on speech. U.S. 16. Constitutional Law O1490 Const. Amend. 1. Pursuant to the long-established ‘‘unconstitutional conditions doctrine,’’ the 20. Constitutional Law O1730 government may not restrict a recipient’s speech simply because the government The government need not permit all provides him a benefit. U.S. Const. forms of speech on property that it owns Amend. 1. and controls; however, it may not restrict See publication Words and Phrases all private speech on its property solely for other judicial constructions and because it is the owner. U.S. Const. definitions. Amend. 1. 17. Constitutional Law O1545 21. Constitutional Law O1738 United States O314(1) Conditions attached to government ‘‘Traditional public forums,’’ for pur- programs may unconstitutionally restrict pose of First Amendment forum analysis, First Amendment rights even if the pro- are places such as streets and parks which gram involves Congress’ authority to di- have immemorially been held in trust for rect spending under the Spending Clause: the use of the public and, time out of mind, the constitutional line, while hardly clear, have been used for purposes of assembly, rests between conditions that define the communicating thoughts between citizens, 4a

IN RE BRUNETTI 1333 Cite as 877 F.3d 1330 (Fed. Cir. 2017)

and discussing public questions. U.S. 26. Constitutional Law O1730 Const. Amend. 1. Where the government has opened its See publication Words and Phrases property for a limited purpose, it can con- for other judicial constructions and stitutionally restrict speech consistent with definitions. that purpose as long as the regulation on 22. Constitutional Law O1746 speech is reasonable and not an effort to ‘‘Designated public forums,’’ for pur- suppress expression merely because offi- pose of First Amendment forum analysis, cials oppose the speaker’s view. U.S. are created when government property Const. Amend. 1. that has not traditionally been regarded as 27. Constitutional Law O1604 a public forum is intentionally opened up Trademark registration program does for that purpose. U.S. Const. Amend. 1. not constitute a limited public forum, for See publication Words and Phrases for other judicial constructions and purpose of determining whether ‘‘immoral definitions. and scandalous’’ provision of Lanham Act is subject to a less demanding degree of 23. Constitutional Law O1747 scrutiny than normally applied to content- In designated public forums, the gov- based restrictions on speech. U.S. Const. ernment’s ability to permissibly restrict Amend. 1; Lanham Trade-Mark Act § 2, expressive conduct is very limited; content- 15 U.S.C.A. § 1052(a). based restrictions on speech must be narrowly tailored to serve a compelling gov- 28. Constitutional Law O1536 ernment interest, and restrictions based on ‘‘Commercial speech’’ is speech which viewpoint are prohibited. U.S. Const. does no more than propose a commercial Amend. 1. transaction. U.S. Const. Amend. 1. O See publication Words and Phrases 24. Constitutional Law 1742 for other judicial constructions and ‘‘Limited public forums,’’ for purpose definitions. of First Amendment forum analysis, are 29. Constitutional Law O1604 places the government has limited to use Lanham Act’s prohibition on registra- by certain groups or dedicated solely to tion of immoral and scandalous marks reg- the discussion of certain subjects. U.S. ulates the expressive components of Const. Amend. 1. speech, rather than the commercial compo- See publication Words and Phrases for other judicial constructions and nents of speech, for purpose of determin- definitions. ing proper level of scrutiny to apply to provision. U.S. Const. Amend. 1; Lanham 25. Constitutional Law O1743 Trade-Mark Act § 2, 15 U.S.C.A. As with traditional and designated § 1052(a). public forums, regulations that discriminate based on viewpoint in limited public 30. Constitutional Law O1541 forums are presumed unconstitutional, but Intermediate scrutiny of a restriction content-based restrictions on speech are on commercial speech requires that the subject to a lesser degree of scrutiny and state must show at least that the statute remain constitutional so long as the dis- directly advances a substantial governmen- tinctions drawn are reasonable in light of tal interest and that the measure is drawn the purpose served by the forum. U.S. to achieve that interest. U.S. Const. Const. Amend. 1. Amend. 1. 5a

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31. Constitutional Law O1541 36. Constitutional Law O1559, 1561 Under the First Amendment, com- Even when many adults themselves mercial speech is subject to a four-part would find the material highly offensive, test, which asks whether: (1) the speech adults have a First Amendment right to concerns lawful activity and is not mislead- view and hear speech that is profane and ing; (2) the asserted government interest scandalous. U.S. Const. Amend. 1. is substantial; (3) the regulation directly 37. Constitutional Law O1604 advances that government interest; and (4) Trademarks O1234 whether the regulation is not more exten- Even if government had a substantial sive than necessary to serve that interest. interest in protecting the public from scan- U.S. Const. Amend. 1. dalous and immoral marks, Lanham Act’s 32. Constitutional Law O1038 prohibition on registration of immoral and scandalous marks did not directly advance Under a commercial speech inquiry, it such interest, as required for provision to is the state’s burden to justify its content- survive intermediate scrutiny of commer- based law as consistent with the First cial speech under First Amendment, where Amendment. U.S. Const. Amend. 1. provision did not directly prevent appli- 33. Constitutional Law O1604 cants from using their marks. U.S. Const. Amend. 1; Lanham Trade-Mark Act § 2, Trademarks O1234 15 U.S.C.A. § 1052(a). Lanham Act’s prohibition on registra- O tion of immoral and scandalous marks did 38. Constitutional Law 1604 O not advance a substantial government in- Trademarks 1234 terest, as required to survive intermediate Even if government had a substantial scrutiny of commercial speech under First interest in protecting the public from scan- Amendment, where only interest identified dalous and immoral marks, Lanham Act’s by government that provision served was prohibition on registration of immoral and government’s interest in protecting public scandalous marks was more extensive than order and morality, which was not suffi- necessary to serve that interest, and thus cient to justify the broad suppression of did not survive intermediate scrutiny un- speech. U.S. Const. Amend. 1; Lanham der First Amendment, where Patent and Trade-Mark Act § 2, 15 U.S.C.A. Trademark Office (PTO) inconsistently ap- § 1052(a). plied such provision, approving marks nearly identical to other marks that had 34. Constitutional Law O1559 previously been rejected as scandalous or The fact that society may find speech immoral. U.S. Const. Amend. 1; Lanham offensive is not a sufficient reason for sup- Trade-Mark Act § 2, 15 U.S.C.A. pressing it. U.S. Const. Amend. 1. § 1052(a). O 35. Constitutional Law O1517 39. Constitutional Law 990 Courts construe statutes narrowly to Where the designed benefit of a con- preserve their constitutionality, when pos- tent-based speech restriction is to shield sible. the sensibilities of listeners, the general rule is that the right of expression pre- 40. Constitutional Law O1025 vails, even where no less restrictive alter- The infringement of First Amendment native exists. U.S. Const. Amend. 1. rights will not be cured if the narrowing 6a

IN RE BRUNETTI 1335 Cite as 877 F.3d 1330 (Fed. Cir. 2017)

construction of a statute is so unforesee- JOSHUA MARC SALZMAN, Appellate Staff, able that men of common intelligence could Civil Division, United States Department not have realized the law’s limited scope at of Justice, Washington, DC, argued for the only relevant time, when their acts appellee Joseph Matal. Also represented were committed, or if the law remains by DANIEL TENNY, MARK R. FREEMAN, BEN- excessively sweeping even as narrowed. JAMIN C. MIZER; NATHAN K. KELLEY, THOM- U.S. Const. Amend. 1. AS L. CASAGRANDE, CHRISTINA HIEBER, MARY BETH WALKER, MOLLY R. SILFEN, THOMAS 41. Constitutional Law O1025 W. KRAUSE, Office of the Solicitor, United It is permissible to construe a statute States Patent and Trademark Office, Alex- in a manner that preserves its constitu- andria, VA. tionality only where the construction is reasonable. Before DYK, MOORE, and STOLL, Circuit Judges. 42. Constitutional Law O1604 Trademarks O1072 Concurring opinion filed by Circuit It was not reasonable to construe Judge Dyk. words ‘‘immoral’’ and ‘‘scandalous,’’ as MOORE, Circuit Judge. used in Lanham Act provision prohibiting Erik Brunetti appeals from the decision registration of immoral and scandalous of the Trademark Trial and Appeal Board marks, as confined to obscene material, (‘‘Board’’) affirming the examining attor- and thus court would not adopt narrowing ney’s refusal to register the mark FUCT construction to preserve constitutionality because it comprises immoral or scandal- of provision under First Amendment; al- ous matter under 15 U.S.C. § 1052(a) though all obscene marks would be scan- (‘‘§ 2(a)’’). We hold substantial evidence dalous or immoral, not all scandalous or supports the Board’s findings and it did immoral marks would be obscene, and Pat- not err concluding the mark comprises ent and Trademark Office (PTO) had for a immoral or scandalous matter. We con- century rejected marks as scandalous or clude, however, that § 2(a)’s bar on regis- immoral that were clearly not obscene, tering immoral or scandalous marks is an such as blasphemous marks touching on unconstitutional restriction of free speech. religion. U.S. Const. Amend. 1; Lanham We therefore reverse the Board’s holding Trade-Mark Act § 2, 15 U.S.C.A. that Mr. Brunetti’s mark is unregistrable. § 1052(a).

BACKGROUND West Codenotes I. Section 2(a)’s Bar on Registration Held Unconstitutional of Immoral or Scandalous Marks Lanham Trade-Mark Act § 2, 15 Section 2(a) of the Lanham Act provides U.S.C.A. § 1052(a) that the Patent and Trademark Office (‘‘PTO’’) may refuse to register a trademark that ‘‘[c]onsists of or comprises im- Appeal from the United States Patent moral, deceptive, or scandalous matter; or and Trademark Office, Trademark Trial matter which may disparage or falsely and Appeal Board in No. 85310960. suggest a connection with persons, living JOHN R. SOMMER, Irvine, CA, argued for or dead, institutions, beliefs, or national appellant. symbols, or bring them into contempt or 7a

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disrepute TTTT’’ 15 U.S.C. § 1052(a). While tion.’’ In re Fox, 702 F.3d 633, 635 (Fed. § 2(a) identifies ‘‘immoral’’ and ‘‘scandal- Cir. 2012) (alterations omitted) (quoting In ous’’ subject matter as separate bases to re Mavety Media Grp. Ltd., 33 F.3d 1367, refuse to register a trademark—and are 1371 (Fed. Cir. 1994)). Alternatively, ‘‘the provisions separated by the ‘‘deceptive’’ PTO may prove scandalousness by estab- provision—the PTO generally applies the lishing that a mark is ‘vulgar.’ ’’ Id. (quot- bar on immoral or scandalous marks as a ing In re Boulevard Entm’t, Inc., 334 F.3d unitary provision (‘‘the immoral or scan- 1336, 1340 (Fed. Cir. 2003)). Vulgar marks dalous provision’’). See TMEP § 1203.01 are ‘‘lacking in taste, indelicate, [and] mor- (‘‘Although the words ‘immoral’ and ‘scan- ally crude TTTT’’ See McGinley, 660 F.2d dalous’ may have somewhat different con- at 486 (quoting In re Runsdorf, 171 notations, case law has included immoral U.S.P.Q. 443, 443–44 (1971)). The PTO matter in the same category as scandalous makes a determination as to whether a matter.’’); In re McGinley, 660 F.2d 481, mark is scandalous ‘‘in the context of con- 485 n.6 (CCPA 1981) (‘‘Because of our temporary attitudes’’ and ‘‘in the context of holding, infra, that appellant’s mark is the marketplace as applied to only the ‘scandalous,’ it is unnecessary to consider goods described in the application.’’ Fox, whether appellant’s mark is ‘immoral.’ We 702 F.3d at 635 (internal quotation marks note the dearth of reported trademark de- and alterations omitted) (quoting Mavety, cisions in which the term ‘immoral’ has 33 F.3d at 1371). been directly applied.’’); see also Anne Gil- [5] Because the scandalousness deter- son LaLonde & Jerome Gilson, Trade- mination is made in the context of contem- marks Laid Bare: Marks That May Be porary attitudes, the concept of what is Scandalous or Immoral, 101 Trademark actually immoral or scandalous changes Rep. 1476, 1489 (2011) (‘‘U.S. courts and over time. Early cases often, but not al- the Board have not distinguished between ways, focused on religious words or sym- ‘immoral’ and ‘scandalous’ and have fo- bols. See, e.g., In re Riverbank Canning cused on whether marks are scandalous or Co., 95 F.2d 327, 329 (CCPA 1938) (MA- offensive rather than contrary to some ac- DONNA for wine); Ex parte Martha Maid cepted standard of morality.’’ (citation Mfg. Co., 37 U.S.P.Q. 156 (Comm’r Pat. omitted)). The bar on immoral or scandal- 1938) (QUEEN MARY for women’s under- ous marks was first codified in 1905, see wear); Ex Parte Summit Brass & Bronze Act of Feb. 20, 1905, ch. 592, § 5(a), 33 Works, Inc., 59 U.S.P.Q. 22 (Comm’r Pat. Stat. 724, 725, and re-enacted in the Lan- 1943) (AGNUS DEI for safes); In re P. J. ham Act in 1946, Pub. L. 79–489, § 2(a), 60 Valckenberg, Gmbh, 122 U.S.P.Q. 334 Stat. 427, 428 (codified at 15 U.S.C. (T.T.A.B. 1959) (MADONNA for wine); In § 1052(a)). re Reemtsma Cigarettenfabriken [1–4] To determine whether a mark G.M.B.H., 122 U.S.P.Q. 339 (T.T.A.B. should be disqualified under § 2(a), the 1959) (SENUSSI (a Muslim sect that for- PTO asks whether a ‘‘substantial compos- bids smoking) for cigarettes); In re Socie- ite of the general public’’ would find the dade Agricola E. Comerical Dos Vinhos mark scandalous, defined as ‘‘shocking to Messias, S.A.R.L., 159 U.S.P.Q. 275 the sense of truth, decency, or propriety; (T.T.A.B. 1968) (MESSIAS for wine and disgraceful; offensive; disreputable; TTT brandy). In later cases, the PTO rejected a giving offense to the conscience or moral wider variety of marks as scandalous. See, feelings; TTT or calling out for condemna- e.g., Runsdorf, 171 U.S.P.Q. at 443 (BUB- 8a

IN RE BRUNETTI 1337 Cite as 877 F.3d 1330 (Fed. Cir. 2017)

BY TRAP for brassieres); McGinley, 660 ‘‘strong, and often explicit, sexual imagery F.2d at 482 (mark consisting of ‘‘a photo- that objectifies women and offers degrad- graph of a nude man and woman kissing ing examples of extreme misogyny,’’ with a and embracing in a manner appearing to theme ‘‘of extreme nihilism—displaying an expose the male genitalia’’ for a swingers unending succession of anti-social imagery newsletter); In re Tinseltown, Inc., 212 of executions, despair, violent and bloody U.S.P.Q. 863 (T.T.A.B. 1981) (BULLSHIT scenes including dismemberment, hella- on handbags, purses, and other personal cious or apocalyptic events, and dozens of accessories); Greyhound Corp. v. Both examples of other imagery lacking in Worlds, Inc., 6 U.S.P.Q.2d 1635 (T.T.A.B. taste.’’ J.A. 8–9. The Board explained that 1988) (mark depicting a defecating dog); Mr. Brunetti’s use of the mark ‘‘will be Mavety, 33 F.3d 1367 (BLACK TAIL for perceived by his targeted market segment adult entertainment magazines). as the phonetic equivalent of the wor[d] ‘fucked.’ ’’ J.A. 9. In light of the record, it II. Facts of This Case found Mr. Brunetti’s assertion that the Mr. Brunetti owns the clothing brand mark ‘‘was chosen as an invented or coined ‘‘fuct,’’ which he founded in 1990. In 2011, term stretches credulity.’’ Id. It concluded two individuals filed an intent-to-use appli- that the mark is vulgar and therefore un- cation (No. 85/310,960) for the mark FUCT registrable under § 2(a) of the Lanham for various items of apparel. The original Act. Mr. Brunetti appealed. We have juris- applicants assigned the application to Mr. diction under 28 U.S.C. § 1295(a)(4). Brunetti, who amended it to allege use of the mark. The examining attorney refused DISCUSSION to register the mark under § 2(a) of the Mr. Brunetti argues substantial evidence Lanham Act, finding it comprised immoral does not support the Board’s finding the or scandalous matter. The examining at- mark FUCT is vulgar under § 2(a) of the torney reasoned that FUCT is the past Lanham Act. He argues even if the mark tense of the verb ‘‘fuck,’’ a vulgar word, is vulgar, § 2(a) does not expressly prohib- and is therefore scandalous. J.A. 203. it the registration of vulgar marks and a Mr. Brunetti requested reconsideration mark should be approved for registration and appealed to the Board. The examining when there is doubt as to its meaning, as attorney denied reconsideration, and the he alleges there is here. Alternatively, Mr. Board affirmed. In its decision, the Board Brunetti challenges the constitutionality of stated the dictionary definitions in the rec- § 2(a)’s bar on immoral or scandalous ord uniformly characterize the word ‘‘fuck’’ marks. as offensive, profane, or vulgar. The Board noted that the word ‘‘fuct’’ is defined by I. The Mark FUCT is Vulgar Urban Dictionary as the past tense of the and Therefore Scandalous verb ‘‘fuck’’ and pronounced the same as [6–9] The determination that a mark is the word ‘‘fucked,’’ and therefore found it scandalous is a conclusion of law based is ‘‘recognized as a slang and literal equiv- upon underlying factual inquiries. Fox, 702 alent of the word ‘fucked,’ ’’ with ‘‘the same F.3d at 637. We review the Board’s factual vulgar meaning.’’ J.A. 6–7 & n.6. Based on findings for substantial evidence and its the examining attorney’s Google Images ultimate conclusion de novo. Id. Substan- search results, the Board stated Mr. Brun- tial evidence is ‘‘more than a mere scintil- etti used the mark in the context of la’’ and ‘‘such relevant evidence as a rea- 9a

1338 877 FEDERAL REPORTER, 3d SERIES sonable mind might accept as adequate’’ to streets.’’ J.A. 312. Because one meaning of support a conclusion. Consol. Edison v. ‘‘fuck’’ is ‘‘to have sex with someone,’’ the NLRB, 305 U.S. 197, 229, 59 S.Ct. 206, 83 placement of the mark on products con- L.Ed. 126 (1938). taining sexual imagery makes it more like- It is undisputed that the word ‘‘fuck’’ is ly that the mark will be perceived as the vulgar. Dictionaries in the record charac- phonetic equivalent of the word ‘‘fucked.’’ terize the word as ‘‘taboo,’’ ‘‘one of the J.A. 9. most offensive’’ English words, ‘‘almost Mr. Brunetti challenges the evidence on universally considered vulgar,’’ and an ‘‘ex- which the Board relied in making the vul- tremely offensive expression.’’ J.A. 5–6; garity finding. He argues that Urban Dic- J.A. 206 (Collins Online Dictionary); J.A. tionary is not a standard dictionary edited 209 (Vocabulary.com); J.A. 211 (Wikipe- by lexicographers and the author of the dia.com); J.A. 351 (MacMillan Dictionary). definition cited by the Board lacks lexico- Mr. Brunetti argues that the vulgarity of graphic expertise. He argues that the ‘‘fuck’’ is irrelevant to whether the mark Board did not consider his current line of FUCT is vulgar. We do not agree. products, which he provided to the examin- Substantial evidence supports the ing attorney, but instead relied on a ran- Board’s finding that ‘‘fuct’’ is a ‘‘phonetic dom collection of outdated products col- twin’’ of ‘‘fucked,’’ the past tense of the lected from Google Images. He argues the word ‘‘fuck.’’ J.A. 10. Urban Dictionary Board should not have considered these defines ‘‘fuct’’ as the ‘‘past tense of the images because they lack foundation, are verb fuck.’’ J.A. 83. MacMillan Dictionary inadmissible hearsay, and are irrelevant to indicates that the word ‘‘fucked’’ is pro- the current perception of the mark in the nounced phonetically as /fekt/, which the marketplace. He also argues that the ma- Board found sounds like ‘‘fukt’’ or ‘‘fuct.’’ jority of the marked products contain no J.A. 6 & n.6. This evidence linking the two sexual imagery. terms is sufficient to render the vulgarity of the word ‘‘fuck’’ relevant to the vulgari- [10, 11] Mr. Brunetti’s arguments have ty of Mr. Brunetti’s mark. no merit. For ex parte proceedings, the Board permits the examining attorney to Evidence of the use of Mr. Brunetti’s consider materials from the Internet, hav- mark in the marketplace further buttress- ing adopted a ‘‘somewhat more permissive es the Board’s finding of a link between stance with respect to the admissibility the mark and the word ‘‘fuck.’’ The Board and probative value of evidence.’’ TBMP found the term ‘‘fuct’’ is used on products §§ 1208, 1208.03. The pedigree of the au- containing sexual imagery and that con- thor of a definition may affect the weight sumers perceive the mark as having ‘‘an that evidence is given but does not render unmistakable aura of negative sexual con- the definition irrelevant. Similarly, the notations.’’ J.A. 9. One T-shirt—captioned ages of the images collected by the exam- the ‘‘FUCT Orgy’’ shirt—depicts a group ining attorney may affect evidentiary sex scene. J.A. 346. Another T-shirt con- weight, not relevance. tains the word ‘‘FUCK’’ in yellow letters, with a ‘‘T’’ superimposed over the ‘‘K’’ Mr. Brunetti also argues that the Board such that the word FUCK is still visible. ignored probative evidence that the mark J.A. 325. A third T-shirt has the brand is not vulgar. He argues that both he and name FUCT depicted above the slogan the owner of a high-end clothing store ‘‘1970 smokin dope & fucking in the declared that the mark was not vulgar. He 10a

IN RE BRUNETTI 1339 Cite as 877 F.3d 1330 (Fed. Cir. 2017) argues that the meaning of the term ‘‘fuct’’ Mr. Brunetti argues that even if FUCT is ambiguous, but that to the extent it has is vulgar, § 2(a) does not prohibit the reg- any meaning, it is ‘‘Friends yoU Can’t istration of vulgar marks—only ‘‘immoral’’ Trust.’’ See Mavety, 33 F.3d at 1374 (‘‘com- or ‘‘scandalous’’ marks. He argues that to mend[ing] the practice’’ of erring on the be immoral or scandalous, a mark must be side of publication when marks are not more than merely vulgar. He argues that clearly scandalous). He claims that in over extending § 2(a) to vulgar marks is con- twenty years of operation, he received only trary to the plain language of the statute. a single complaint about his brand name We do not agree. We have previously and the brand is mass-distributed by held ‘‘the PTO may prove scandalousness ‘‘high-end national retailers’’ like Urban by establishing that a mark is ‘vulgar.’ ’’ Outfitters. Appellant’s Br. 8. Finally, he Fox, 702 F.3d at 635; see also Boulevard argues that two of Urban Dictionary’s sev- Entm’t, 334 F.3d at 1340 (‘‘A showing that en definitions of the term ‘‘fuct’’ refer to a mark is vulgar is sufficient to establish his brand name, while only one definition that it ‘consists of or comprises immoral TTT is vulgar. or scandalous matter’ within the meaning of section 1052(a).’’). We are bound by Mr. Brunetti’s proffered evidence does these holdings. not change our conclusion that substantial Even if we could overrule our prior evidence supports the Board’s findings. holding that a showing of vulgarity is suffi- The Board explicitly considered Mr. Brun- cient to establish that a mark ‘‘consists of etti’s declaration and found it ‘‘stretche[d] or comprises immoral TTT or scandalous credulity’’ that ‘‘fuct’’ was chosen as an matter,’’ we see no justification for doing invented or coined term for ‘‘Friends yoU so in light of the evidence of record. At the Can’t Trust,’’ given the contradictory rec- time of the passage of the Lanham Act, ord evidence. J.A. 9–10. Mr. Brunetti’s un- dictionaries defined ‘‘scandalous’’ as verifiable claim about the number of cus- ‘‘shocking to the sense of truth, decency, tomer complaints may demonstrate that or propriety,’’ ‘‘[g]iving offense to the con- the mark is not offensive to a certain science or moral feelings,’’ or ‘‘calling out segment of the market. That does not sat- [for] condemnation.’’ McGinley, 660 F.2d isfy his burden on appeal, however, to at 485–86 (citing Webster’s New Interna- establish that the Board lacked substantial tional Dictionary (2d ed. 1942); Funk & evidence for its determination that a ‘‘sub- Wagnalls New Standard Dictionary stantial composite’’ of the American public (1945)). Other definitions characterize would find the mark vulgar. And the fact scandalous as ‘‘disgraceful,’’ ‘‘offensive,’’ or that the Board could have relied on one of ‘‘disreputable.’’ Id. (citing Webster’s New the other five definitions of the term ‘‘fuct’’ International Dictionary (2d ed. 1942); on Urban Dictionary—a website to which Funk & Wagnalls New Standard Dictio- anyone can anonymously submit defini- nary (1945)). We see no definition of scan- tions—does not demonstrate that the dalous that, in light of the PTO’s fact Board’s reliance on that website is not findings, would exempt Mr. Brunetti’s substantial evidence. The Board reason- mark. ably focused on the highest rated defini- We see no merit in Mr. Brunetti’s argu- tion, suggesting that it is more common or ments relating to whether the mark is accurate than the alternative, non-vulgar scandalous and therefore prohibited regis- definitions. tration under § 2(a). Substantial evidence 11a

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supports the Board’s finding the mark id. at 1345–48, and that trademark regis- FUCT is vulgar and therefore the Board tration was a federal subsidy, id. at 1348– did not err in concluding the mark is not 55. Finally, we held the disparagement registrable under § 2(a). provision did not survive even the lesser scrutiny afforded to commercial speech un- II. Section 2(a)’s Bar on Immoral or der Central Hudson Gas & Electric Corp. Scandalous Marks is Unconstitutional v. Public Service Commission, 447 U.S. Under the First Amendment 557, 563, 100 S.Ct. 2343, 65 L.Ed.2d 341 (1980), because the government had put When Mr. Brunetti filed his appeal, his forth no substantial interests justifying the constitutional argument was foreclosed by regulation of speech. Tam, 808 F.3d at binding precedent. In McGinley, our pre- 1355–58. decessor court held the refusal to register a mark under § 2(a) does not bar the The en banc court noted that § 2(a) applicant from using the mark, and there- contains a hodgepodge of differing prohibi- fore does not implicate the First Amend- tions on registration, and as such, the hold- ment. 660 F.2d at 484. Commentators ing in Tam was limited to § 2(a)’s disparagement provision. Id. at 1330; see also id. heavily criticized McGinley and our contin- at 1330 n.1. However, the court left open ued reliance on it, particularly in light of whether other portions of § 2 may also be the many changes to First Amendment unconstitutional, and held that McGinley jurisprudence over the last thirty years. In was overruled insofar as it could prevent a re Tam, 808 F.3d 1321, 1333–34 & n.4 future panel from reconsidering the consti- (Fed. Cir. 2015) (en banc). We reconsid- tutionality of other portions of § 2. Id. at ered McGinley en banc in Tam, which 1330 n.1. held the disparagement provision of § 2(a) unconstitutional under the First Amend- Following the issuance of our en banc ment because it discriminated on the basis decision in Tam, we requested additional of content, message, and viewpoint. Id. at briefing from both parties in this case on ‘‘the impact of the Tam decision on Mr. 1334–37, 1358. We held that, although Brunetti’s case, and in particular whether trademarks serve a commercial purpose as there is any basis for treating immoral and source identifiers in the marketplace, the scandalous marks differently than dispar- disparagement provision of § 2(a) related aging marks.’’ In re Brunetti, No. 15–1109, to the expressive character of marks, not Docket No. 51 (Fed. Cir. Dec. 22, 2015). their commercial purpose. Id. at 1337–39. Both parties filed letter briefs. The gov- As either a content-based or viewpoint- ernment stated that ‘‘given the breadth of based regulation of expressive speech, the the Court’s Tam decision and in view of disparagement provision was subject to the totality of the Court’s reasoning,’’ strict scrutiny. Id. at 1339. It was undis- there is no reasonable basis for treating puted that the measure did not survive immoral or scandalous marks differently such scrutiny. Id. than disparaging marks. Gov’t Letter Br. We rejected the government’s argu- 2, In re Brunetti, No. 15–1109, Docket No. ments that § 2(a) did not implicate the 52 (Fed. Cir. Jan. 21, 2016). It maintained, First Amendment, holding instead that the however, that if the Solicitor General PTO’s denial of marks had a chilling effect sought Supreme Court review of our en on speech. Id. at 1339–45. We also rejected banc decision in Tam, ‘‘the government the government’s arguments that trade- may argue that, under reasoning less mark registration was government speech, sweeping than that adopted in Tam, the 12a

IN RE BRUNETTI 1341 Cite as 877 F.3d 1330 (Fed. Cir. 2017) bar on registration of scandalous and im- opinion concluded the disparagement pro- moral marks would survive even if the bar vision failed even the intermediate test on registration of disparaging marks were under Central Hudson because the prohi- held invalid.’’ Id. at 4. The Supreme Court bition was not narrowly drawn to a sub- subsequently granted certiorari. Lee v. stantial government interest. Id. at 1764– Tam, ––– U.S. ––––, 137 S.Ct. 30, 195 65 (Alito, J.). Justice Kennedy’s opinion L.Ed.2d 902 (2016). concluded that, because the disparagement On June 19, 2017, the Supreme Court provision discriminates based on viewpoint, unanimously affirmed our en banc decision it was subject to heightened scrutiny, in Tam. Matal v. Tam, ––– U.S. ––––, 137 which it did not withstand. Id. at 1767–68 S.Ct. 1744, 198 L.Ed.2d 366 (2017). The (Kennedy, J.). Neither opinion reached the Court held that trademarks are private, constitutionality of other provisions of § 2 not government, speech. Id. at 1757–61. of the Lanham Act. See, e.g., id. at 1768 Pursuant to two opinions authored by Jus- (Kennedy, J.). tice Alito and Justice Kennedy, it conclud- Following the issuance of the Supreme ed that § 2(a)’s bar on the registration of Court’s decision in Tam, we requested ad- disparaging marks discriminated based on ditional briefing from the parties regard- viewpoint. Id. at 1763 (Alito, J.); id. at 1765 ing the impact of the Supreme Court’s (Kennedy, J.). The Court explained the decision on Mr. Brunetti’s case. In re disparagement provision ‘‘offends a bed- Brunetti, No. 15–1109, Docket No. 58 rock First Amendment principle: Speech (Fed. Cir. June 20, 2017). Both parties may not be banned on the ground that it submitted letter briefs and we heard oral expresses ideas that offend.’’ Id. at 1751 argument on August 29, 2017. The govern- (Alito, J.); accord id. at 1766 (Kennedy, J.). ment contends Tam does not resolve the The plurality opinion, authored by Justice constitutionality of § 2(a)’s bar on register- Alito and joined by Chief Justice Roberts, ing immoral or scandalous marks because Justice Thomas, and Justice Breyer, fur- the disparagement provision implicates ther concluded that the constitutionality of viewpoint discrimination, whereas the im- the disparagement provision could not be moral or scandalous provision is viewpoint sustained by analyzing trademark registra- neutral. Gov’t Letter Br. 6–9, In re Brun- tion as either a federal subsidy or a federal etti, No. 15–1109, Docket No. 60 (Fed. Cir. program. Id. at 1760–63 (Alito, J.). The July 20, 2017). remaining four participating Justices While we question the viewpoint neutral- opined, in a concurring opinion authored ity of the immoral or scandalous provision, by Justice Kennedy, that ‘‘the viewpoint we need not resolve that issue. Indepen- discrimination rationale renders unneces- dent of whether the immoral or scandalous sary any extended treatment of other provision is viewpoint discriminatory, we questions raised by the parties.’’ Id. at conclude the provision impermissibly dis- 1765 (Kennedy, J.). criminates based on content in violation of Both opinions held the disparagement the First Amendment. provision unconstitutionally restricted free speech, left open was ‘‘the question of A. Section 2(a)’s Bar on Registering Im- whether Central Hudson provides the ap- moral or Scandalous Marks is an Un- propriate test for deciding free speech constitutional Content–Based Restric- challenges to provisions of the Lanham tion on Speech Act.’’ Id. at 1764 n.17 (Alito, J.); see also [12–14] The government restricts id. at 1767 (Kennedy, J.). Justice Alito’s speech based on content when ‘‘a law ap- 13a

1342 877 FEDERAL REPORTER, 3d SERIES plies to particular speech because of the ernment argues trademarks are commer- topic discussed or the idea or message cial speech implicating only the intermedi- expressed.’’ Reed v. Town of Gilbert, ––– ate level of scrutiny set forth in Central U.S. ––––, 135 S.Ct. 2218, 2227, 192 Hudson. Gov’t Letter Br. 15, In re Brun- L.Ed.2d 236 (2015). Content-based statutes etti, No. 15–1109, Docket No. 60 (Fed. Cir. are presumptively invalid. RAV v. City of July 20, 2017); Oral Arg. at 35:05–17. Un- St. Paul, Minn., 505 U.S. 377, 382, 112 der a less exacting degree of scrutiny, the S.Ct. 2538, 120 L.Ed.2d 305 (1992). To government argues the immoral or scan- survive, such statutes must withstand dalous provision is an appropriate content- strict scrutiny review, which requires the based restriction tailored to substantial government to ‘‘prove that the restriction government interests. We consider these furthers a compelling interest and is nar- arguments in turn. rowly tailored to achieve that interest.’’ Reed, 135 S.Ct. at 2231 (quoting Ariz. Free 1. Trademark Registration is Not a Enter. Club’s Freedom Club PAC v. Ben- Government Subsidy Program nett, 564 U.S. 721, 734, 131 S.Ct. 2806, 180 L.Ed.2d 664 (2011)); United States v. Play- [15–17] The Spending Clause of the boy Entm’t Grp., Inc., 529 U.S. 803, 813, U.S. Constitution ‘‘provides Congress 120 S.Ct. 1878, 146 L.Ed.2d 865 (2000) (‘‘If broad discretion to tax and spend for the a statute regulates speech based on its ‘general Welfare,’ including by funding content, it must be narrowly tailored to particular state or private programs or promote a compelling Government inter- activities.’’ Agency for Int’l Dev. v. All. for est. If a less restrictive alternative would Open Soc’y Int’l, Inc., 570 U.S. 205, 133 serve the Government’s purpose, the legis- S.Ct. 2321, 2327–28, 186 L.Ed.2d 398 lature must use that alternative.’’). Strict (2013); U.S. Const. art. I, § 8, cl. 1. Within scrutiny applies whether a government this discretion is the authority to attach statute bans or merely burdens protected certain conditions to the use of its funds speech. See Playboy, 529 U.S. at 812, 120 ‘‘to ensure they are used in the manner S.Ct. 1878 (‘‘The Government’s content- Congress intends.’’ Id. at 2328; see also based burdens must satisfy the same rig- Rust v. Sullivan, 500 U.S. 173, 198, 111 orous scrutiny as its content-based bans.’’). S.Ct. 1759, 114 L.Ed.2d 233 (1991) (‘‘The The government concedes that § 2(a)’s condition that federal funds will be used bar on registering immoral or scandalous only to further the purposes of a grant marks is a content-based restriction on does not violate constitutional rights.’’). speech. Oral Arg. at 11:57–12:05. And the Other government-imposed conditions may government does not assert that the im- impermissibly impinge the First Amend- moral or scandalous provision survives ment rights of fund recipients. Pursuant to strict scrutiny review. Instead, the govern- the long-established unconstitutional condi- ment contends § 2(a)’s content-based bar tions doctrine, the government may not on registering immoral or scandalous restrict a recipient’s speech simply because marks does not implicate the First Amend- the government provides him a benefit: ment because trademark registration is ei- [E]ven though a person has no ‘‘right’’ to ther a government subsidy program or a valuable governmental benefit and limited public forum. Gov’t Letter Br. 14, even though the government may deny In re Brunetti, No. 15–1109, Docket No. him the benefit for any number of rea- 60 (Fed. Cir. July 20, 2017); Oral Arg. at sons, there are some reasons upon which 12:06–21, 18:15–39. Alternatively, the gov- the government may not rely. It may 14a

IN RE BRUNETTI 1343 Cite as 877 F.3d 1330 (Fed. Cir. 2017)

not deny a benefit to a person on a basis ticulated in Agency for International De- that infringes his constitutionally pro- velopment, that § 2(a)’s bar on registering tected interests—especially, his interest immoral or scandalous marks is simply a in freedom of speech. reasonable exercise of its spending power, Perry v. Sindermann, 408 U.S. 593, 597 in which the bar on registration is a consti- (1972); accord Bd. of Cty. Comm’rs v. Um- tutional condition defining the limits of behr, 518 U.S. 668, 674, 116 S.Ct. 2342, 135 trademark registration. Our court rejected L.Ed.2d 843 (1996) (‘‘[T]he threat of the the applicability of this analysis to trade- loss of [a valuable financial benefit] in re- mark registration, 9–3, in our en banc taliation for speech may chill speech on decision in Tam.1 808 F.3d at 1348–55. The matters of public concern TTTT’’). Condi- four Justices who reached the issue in tions attached to government programs Tam likewise held the government subsidy may unconstitutionally restrict First framework does not apply to trademark Amendment rights even if the program registration. 137 S.Ct. at 1761 (Alito, J.). involves Congress’ authority to direct Justice Alito explained in his plurality spending under the Spending Clause. See, opinion that while the constitutional frame- e.g., Agency for Int’l Dev., 133 S.Ct. at work articulated in Agency for Interna- 2330–31 (holding Congress could not re- tional Development ‘‘ ‘is not always self- strict appropriations aimed at combating evident,’ no difficult question is presented the spread of HIV/AIDS to only organiza- here.’’ Id. (quoting 133 S.Ct. at 2330 (alter- tions that affirmatively opposed prostitu- ations omitted)). tion and sex trafficking); FCC v. League of Unlike trademark registration, the pro- Women Voters, 468 U.S. 364, 399–400, 104 grams at issue in the Supreme Court’s S.Ct. 3106, 82 L.Ed.2d 278 (1984) (reject- cases upholding the constitutionality of ing the government’s argument that Con- conditions under the Spending Clause nec- gress’ spending power justified condition- essarily and directly implicate Congress’ ing funding to public broadcasters on their power to spend or control government refraining from editorializing). The consti- property. For example, Rust addressed a tutional line, while ‘‘hardly clear,’’ rests condition on the distribution of federal between ‘‘conditions that define the limits funds for family planning services. 500 of the government spending program— U.S. at 177, 111 S.Ct. 1759. The Supreme those that specify the activities Congress Court’s plurality opinion in United States wants to subsidize—and conditions that v. American Library Association, Inc. up- seek to leverage funding to regulate held a condition on federal funding for speech outside the contours of the pro- Internet access to public libraries. 539 U.S. gram itself.’’ Agency for Int’l Dev., 133 194, 212, 123 S.Ct. 2297, 156 L.Ed.2d 221 S.Ct. at 2328. (2003). While Regan v. Taxation with Rep- [18] The government argues, pursuant resentation of Washington concerned tax to the government subsidy framework ar- exemptions and deductions, the Supreme

1. The government maintains that our en banc aspects of our decision in Tam. See Chen v. decision in Tam is not binding on this panel Allstate Ins. Co., 819 F.3d 1136, 1138 n.1 (9th in light of the Supreme Court’s decision in Cir. 2016); Balintulo v. Ford Motor Co., 796 Tam. Oral Arg. at 12:23–13:36, 15:43–54. We F.3d 160, 166 n.28 (2d Cir. 2015). Because question the force of this assertion because we independently reach the same conclusion the Supreme Court did not reverse or other- as the en banc court, we need not decide wise cast doubt on the continuing validity of whether that holding continues to bind future our government subsidy analysis and other panel decisions in this circuit. 15a

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Court specified, ‘‘[b]oth tax exemptions (Alito, J.); Tam, 808 F.3d at 1353 (‘‘Trade- and tax-deductibility are a form of subsidy mark registration does not implicate the that is administered through the tax sys- Spending Clause merely because of this tem.’’ 461 U.S. 540, 544, 103 S.Ct. 1997, 76 attenuated spending, else every benefit or L.Ed.2d 129 (1983). ‘‘The federal registra- regulatory program provided by the gov- tion of a trademark is nothing like the ernment would implicate the Spending programs at issue in these cases.’’ Tam, Clause.’’). The government’s involvement 137 S.Ct. at 1761 (Alito, J.). in processing and issuing trademarks does Trademark registration does not impli- not transform trademark registration into cate Congress’ power to spend funds. An a government subsidy. applicant does not receive federal funds Nor is the grant of trademark registra- upon the PTO’s consideration of, or grant tion a subsidy equivalent. ‘‘Registration is of, a trademark. The only exchange of significant. The Lanham Act confers im- funds flows from the applicant to the PTO. portant legal rights and benefits on trade- The applicant pays the applicable trademark owners who register their marks.’’ mark process and service fees set forth in B&B Hardware, Inc. v. Hargis Indus., 37 C.F.R. § 2.6(a)(1), which are then made Inc., ––– U.S. ––––, 135 S.Ct. 1293, 1300, ‘‘available to the Director to carry out the 191 L.Ed.2d 222 (2015) (quotation marks activities of the [PTO].’’ 35 U.S.C. § 42(c)(1). As explained in our en banc omitted). These benefits are numerous and opinion in Tam, since 1991, trademark reg- include the ‘‘right to exclusive nationwide istration fees—not appropriations from use of that mark where there was no prior taxpayers—have entirely funded the direct use by others,’’ Tam, 808 F.3d at 1328, a operating expenses associated with trade- presumption of validity, 15 U.S.C. mark registration. 808 F.3d at 1353 (citing, § 1057(b), incontestability in certain situa- e.g., Figueroa v. United States, 466 F.3d tions, id. § 1065, the right to sue in federal 1023, 1028 (Fed. Cir. 2006)). Congress’ au- court, id. § 1121, the right to recover tre- thority to direct funds is thus not implicat- ble damages for willful infringement, id. ed by either the operating expenses neces- § 1117, a complete defense to state or sary to examine a proposed mark or the common law claims of trademark dilution, PTO’s ultimate grant of trademark regis- id. § 1125(c)(6), the assistance of U.S. Cus- tration. Of course, trademark registration toms and Border Protection in restricting does not persist entirely independent of importation of infringing or counterfeit federal funds. The government must ex- goods, id. § 1124; 19 U.S.C. § 1526, the pend certain federal funds, including but right to prevent ‘‘cybersquatters’’ from not limited to the cost of PTO employee misappropriating a domain name, 15 benefits and costs associated with trade- U.S.C. § 1125(d), and qualification for a mark enforcement, in connection with simplified process for obtaining recognition trademark registration. See id. (citing Fi- and protection of a mark in countries that gueroa, 466 F.3d at 1028). But to the ex- have signed the Paris Convention, see id. tent government resources are tangential- § 1141b (Madrid Protocol); Paris Conven- ly involved with trademark registration, tion for the Protection of Industrial Prop- ‘‘just about every government service re- erty art. 6 quinquies, July 14, 1967, 21 quires the expenditure of government U.S.T. 1583, 828 U.N.T.S. 305. While these funds.’’ Tam, 137 S.Ct. at 1761 (listing, for benefits are valuable, they are not analo- example, police and fire protection, and gous to Congress’ grant of federal funds. copyright and motor vehicle registrations) The benefits of trademark registration 16a

IN RE BRUNETTI 1345 Cite as 877 F.3d 1330 (Fed. Cir. 2017) arise from the statutory framework of the of case law cannot justify the govern- Lanham Act, and the Lanham Act in turn ment’s content-based bar on registering derives from the Commerce Clause. immoral or scandalous marks. Our sister courts confirm that when gov- 2. Trademark Registration is Not ernment registration does not implicate a Limited Public Forum Congress’ authority under the Spending Clause, the government subsidy line of [19, 20] The constitutionality of speech case law does not govern the constitution- restrictions on government property are ality of § 2(a)’s bar on registering immoral analyzed under the Supreme Court’s ‘‘fo- or scandalous marks. See, e.g., Dep’t of rum analysis,’’ which ‘‘determine[s] when a Tex., Veterans of Foreign Wars v. Tex. governmental entity, in regulating proper- Lottery Comm’n, 760 F.3d 427, 436 (5th ty in its charge, may place limitations on Cir. 2014) (en banc) (holding a bingo pro- speech.’’ See, e.g., Christian Legal Soc’y of gram that was ‘‘merely licensed and regu- the Univ. of Cal. Hastings Coll. of the Law lated by the state’’ was ‘‘wholly distin- v. Martinez, 561 U.S. 661, 669, 130 S.Ct. guishable from the subsidies in Taxation 2971, 177 L.Ed.2d 838 (2010). The forum with Representation and Rust simply be- analysis is driven by the principle that ‘‘the cause no public monies or ‘spending’ by government need not permit all forms of the state are involved’’); Bullfrog Films, speech on property that it owns and con- Inc. v. Wick, 847 F.2d 502, 503, 509 (9th trols.’’ Int’l Soc. for Krishna Conscious- Cir. 1988) (explaining that a treaty under ness, Inc. v. Lee, 505 U.S. 672, 678, 112 which certain ‘‘educational, scientific and S.Ct. 2701, 120 L.Ed.2d 541 (1992); see cultural audio-visual materials’’ were also Lehman v. City of Shaker Heights, granted various benefits, but no federal 418 U.S. 298, 303, 94 S.Ct. 2714, 41 funds, was ‘‘fundamentally different’’ from L.Ed.2d 770 (1974) (‘‘In much the same government subsidy programs). As the way that a newspaper or periodical, or D.C. Circuit noted, ‘‘[t]he Supreme Court even a radio or television station, need not has never extended the subsidy doctrine to accept every proffer of advertising from situations not involving financial benefits.’’ the general public, a city transit system Autor v. Pritzker, 740 F.3d 176, 182–83 has discretion to develop and make reason- (D.C. Cir. 2014) (declining to apply the able choices concerning the type of adver- subsidy doctrine to a presidential directive tising that may be displayed in its vehi- that impacted committee members who cles.’’). The government may not, however, were unpaid). We can see no reason to restrict all private speech on its property treat trademark registration differently. solely because it is the owner. To determine the constitutional bounds of speech If the government is correct that a restrictions on government property, the registration program, such as this, gives forum analysis instructs us to first classify the government the authority to regulate the government’s property as one of three the content of speech, then every govern- forums. ment registration program would provide the government with similar censorship [21–23] The first two forums are tradi- authority. For example, there is no prin- tional public forums and designated public cipled basis to distinguish between the forums. Traditional public forums are registration of trademarks and the regis- places such as ‘‘streets and parks which tration of copyrights under the govern- have immemorially been held in trust for ment program rationale. The subsidy line the use of the public and, time out of mind, 17a

1346 877 FEDERAL REPORTER, 3d SERIES have been used for purposes of assembly, by the forum.’’ Cornelius v. NAACP Legal communicating thoughts between citizens, Def. & Educ. Fund, Inc., 473 U.S. 788, 806, and discussing public questions.’’ Perry 105 S.Ct. 3439, 87 L.Ed.2d 567 (1985). Educ. Ass’n v. Perry Local Educators’ Thus, where the government has opened Ass’n, 460 U.S. 37, 45, 103 S.Ct. 948, 74 its property for a limited purpose, it can L.Ed.2d 794 (1983) (quotation marks omit- constitutionally restrict speech consistent ted). Designated public forums are created with that purpose as long as ‘‘the regula- when ‘‘government property that has not tion on speech is reasonable and not an traditionally been regarded as a public fo- effort to suppress expression merely be- rum is intentionally opened up for that cause officials oppose the speaker’s view.’’ purpose.’’ Pleasant Grove City, Utah v. Perry, 460 U.S. at 46, 103 S.Ct. 948. Summum, 555 U.S. 460, 469, 129 S.Ct. [27] The government argues that the 1125, 172 L.Ed.2d 853 (2009). In these federal trademark registration program is forums, ‘‘the government’s ability to per- a limited public forum, subjecting § 2(a)’s missibly restrict expressive conduct is very content-based restriction on marks com- limited.’’ United States v. Grace, 461 U.S. prising immoral or scandalous subject mat- 171, 177, 103 S.Ct. 1702, 75 L.Ed.2d 736 ter to a less demanding degree of scrutiny. (1983). Content-based restrictions on Gov’t Letter Br. 14–15, In re Brunetti, No. speech ‘‘must be narrowly tailored to serve 15–1109, Docket No. 60 (Fed. Cir. July 20, a compelling government interest, and re- 2017). Without articulating why the federal strictions based on viewpoint are prohibit- trademark registration program is a limited.’’ Pleasant Grove, 555 U.S. at 469, 129 ed public forum, the government’s letter S.Ct. 1125 (internal citation omitted). brief analogizes trademark registration to [24–26] The remaining forum category city buses and a military cemetery. Id. at is the limited public forum, at times re- 14. At oral argument, the government ferred to as a non-public forum. Limited identified the principal register as the lim- public forums are places the government ited public forum, which it contended is a has ‘‘limited to use by certain groups or metaphysical forum much like the forum at dedicated solely to the discussion of cer- issue in Rosenberger. Oral Arg. at 28:40– 2 tain subjects.’’ Id. at 470, 129 S.Ct. 1125. 58. As with traditional and designated public The Supreme Court has found the exis- forums, regulations that discriminate tence of a limited public forum only when based on viewpoint in limited public fo- the government restricts speech on its own rums are presumed unconstitutional. Ro- property. At one end of that spectrum are senberger v. Rector & Visitors of Univ. of venues that are owned and controlled by Va., 515 U.S. 819, 830, 115 S.Ct. 2510, 132 government entities. See, e.g., Greer v. L.Ed.2d 700 (1995). Content-based restric- Spock, 424 U.S. 828, 838, 96 S.Ct. 1211, 47 tions on speech are subject to a lesser L.Ed.2d 505 (1976) (military base); Jones degree of scrutiny and remain constitution- v. N.C. Prisoners’ Labor Union, Inc., 433 al ‘‘so long as the distinctions drawn are U.S. 119, 134, 97 S.Ct. 2532, 53 L.Ed.2d reasonable in light of the purpose served 629 (1977) (prison facilities); Int’l Soc. for

2. Apart from the inconsistency of this argu- not ‘‘regard the register itself as a forum’’— ment with the government’s previous repre- this argument fails as a legal matter. See Tam, sentation in Tam—in which it stated it did not 808 F.3d 1321, Oral Arg. at 1:14:25–1:14:58; believe the forum analysis applied to trade- Tam, 808 F.3d at 1353 n.12. mark registration, and in particular that it did 18a

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Krishna Consciousness, 505 U.S. at 680– inquiry in the context of University spon- 83, 112 S.Ct. 2701 (Port Authority airport sored publications.’’ Id. at 829–30, 836, 115 terminal). These cases unquestionably con- S.Ct. 2510. Although the SAF was ‘‘meta- cern ‘‘a governmental entity, TTT regulat- physical’’—in that it concerned use of the ing property in its charge.’’ See Christian University’s funds rather than the Univer- Legal, 561 U.S. at 669, 130 S.Ct. 2971. sity’s facilities, id. at 830, 115 S.Ct. 2510— Other cases involve property that is clearly the effect of its restrictions on speech were government owned, although present in felt on the government’s property, the public locations. See, e.g., United States v. University. See id. at 836, 115 S.Ct. 2510 Kokinda, 497 U.S. 720, 727–30, 110 S.Ct. (explaining the SAF ‘‘risks the suppression 3115, 111 L.Ed.2d 571 (1990) (sidewalk of free speech and creative inquiry in one outside of Postal Service); Members of of the vital centers for the Nation’s intel- City Council of L.A. v. Taxpayers for Vin- lectual life, its college and university cam- cent, 466 U.S. 789, 814, 104 S.Ct. 2118, 80 puses’’). The forum at issue in Cornelius L.Ed.2d 772 (1984) (public utility poles). likewise involved a more abstract forum— Several of the Court’s remaining limited a charity drive—but that drive was ‘‘con- public forum cases involve speech restric- ducted in the federal workplace during tions that occur on public school property. working hours.’’ 473 U.S. at 790, 105 S.Ct. See, e.g., Christian Legal, 561 U.S. at 679 3439. And while the Supreme Court has n.12, 130 S.Ct. 2971 (registered student applied the forum analysis to broadcasting, organization); Good News Club v. Milford it did so in the context of a state-owned Cent. Sch., 533 U.S. 98, 106, 121 S.Ct. 2093, broadcaster’s sponsorship of a particular 150 L.Ed.2d 151 (2001) (public school debate at its facilities. See Ark. Educ. Tele- opened for instruction and recreation); vision Comm’n v. Forbes, 523 U.S. 666, Lamb’s Chapel v. Ctr. Moriches Union 669, 672, 118 S.Ct. 1633, 140 L.Ed.2d 875 Free Sch. Dist., 508 U.S. 384, 390–92, 113 (1998). S.Ct. 2141, 124 L.Ed.2d 352 (1993) (public school opened for social, civic, and recre- Because trademarks are by definition ational uses); Perry, 460 U.S. at 46–47, 103 used in commerce, the trademark registra- S.Ct. 948 (public school mail facilities). tion program bears no resemblance to While some of the Supreme Court’s lim- these limited public forums. The speech ited public forum cases have involved fo- that flows from trademark registration is rums that exist ‘‘more in a metaphysical not tethered to a public school, federal than in a spatial or geographic sense,’’ workplace, or any other government prop- these forums have nonetheless been teth- erty. A principal feature of trademarks is ered to government properties. See Rosen- that they help ‘‘consumers identify goods berger, 515 U.S. at 830, 115 S.Ct. 2510. In and services that they wish to purchase, as Rosenberger, the Supreme Court consid- well as those they want to avoid.’’ Tam, ered a University’s distribution of funds 137 S.Ct. at 1751. ‘‘These marks make up through a Student Activities Fund (‘‘SAF’’) part of the expression of everyday life, as intended to ‘‘support a broad range of with the names of entertainment groups, extracurricular student activities that ‘are broadcast networks, designer clothing, related to the educational purpose of the newspapers, automobiles, candy bars, toys, University.’ ’’ Id. at 824, 115 S.Ct. 2510. and so on.’’ Id. at 1768 (Kennedy, J.). By The Court concluded the SAF was a limit- their very purpose, trademarks exist to ed public forum that ‘‘effects a sweeping convey messages throughout commerce. It restriction on student thought and student is difficult to analogize the Nike swoosh or 19a

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the Nike JUST DO IT mark located on a fied in a government database, so too could Nike shirt in a Nike store as somehow a the government restrain speech occurring government created limited public forum. on private land or in connection with pri- The registration and use of registered vately-owned vehicles, simply because trademarks simply does not fit within the those private properties are listed in a rubric of public or limited public forum database. Cf. Tam, 137 S.Ct. at 1760 (‘‘For cases. ‘‘[T]he forum analysis requires con- if the registration of trademarks constitut- sideration not only of whether government ed government speech, other systems of property has been opened to the public, government registration could easily be but also of the nature and purpose of the characterized in the same way.’’). As the property at issue.’’ Preminger, 517 F.3d government recognized, such a suppres- 1299 (internal citations omitted); see also sion of speech would raise serious concerns Cornelius, 473 U.S. at 805, 105 S.Ct. 3439 under the unconstitutional conditions doc- (examining the nature of the government trine. See Oral Arg. at 29:56–30:34 (‘‘[T]he property involved). key difference there is the application of the unconstitutional conditions doctrine, A snapshot of marks recently rejected which is the significant constraint on the under the immoral or scandalous provision government’s ability to abuse its power reveals the breadth of goods and services over something like a land registry to in- impacted by § 2(a)’s bar on such marks, fluence speech outside a program.’’). The including speech occurring on clothing, government fails to articulate a reason books, websites, beverages, mechanical why the government’s listing of registered contraptions, and live entertainment. trademarks in a database creates a limited These refusals chill speech anywhere from public forum. And if it did then every the Internet to the grocery store. And government registration program includ- none of them involve government property ing titles to land, registration of cars, reg- over which the government can assert a istration of wills or estates, copyrights, right to ‘‘legally preserve the property un- even marriage licenses could similarly im- der its control for the use to which it is plicate a limited public forum. We thus dedicated.’’ Lamb’s Chapel, 508 U.S. at conclude that government registration of 390, 113 S.Ct. 2141. trademarks does not create a limited pub- That registered marks also appear on lic forum in which the government can the government’s principal register does more freely restrict speech. not transform trademark registration into a limited public forum. The government 3. The Prohibition on the Registration of does not open the principal register to any Immoral or Scandalous Trademarks exchange of ideas—it is ancillary to trade- Targets the Expressive Content of mark registration. The principal register is Speech and Therefore Strict Scrutiny simply a database identifying the marks Should Be Applied approved for use in commerce. Oral Arg. [28, 29] Commercial speech is speech at 29:28–41. Apart from its function as a which does ‘‘no more than propose a com- database, the government has been unable mercial transaction.’’ Va. State Bd. of to define exactly what the principal regis- Pharmacy v. Va. Citizens Consumer ter is, or where it is located. Id. at 29:34– Council, Inc., 425 U.S. 748, 762 (1976) 54. If the government can constitutionally (citation omitted). Trademarks certainly restrain the expression of private speech convey a commercial message, but not ex- in commerce because such speech is identi- clusively so. There is no doubt that trade- 20a

IN RE BRUNETTI 1349 Cite as 877 F.3d 1330 (Fed. Cir. 2017) marks ‘‘identify the source of a product or each value judgments about the expressive service, and therefore play a role in the message behind the trademark. Whether ‘dissemination of information as to who is marks comprise immoral or scandalous producing and selling what product, for subject matter hinges on the expressive, what reason, and at what price.’ ’’ Tam, not source-identifying, nature of trade- 808 F.3d at 1338 (quoting Va. State Bd. of marks. Pharmacy, 425 U.S. at 765). However, trademarks—including immoral or scan- While different provisions of the Lan- dalous trademarks—also ‘‘often have an ham Act may appropriately be classified as expressive content.’’ Tam, 137 S. Ct. at targeting a mark’s source-identifying in- 1760. For immoral or scandalous marks, formation—for example, § 2(e)’s bar on this message is often uncouth. But it can registering marks that are ‘‘merely de- espouse a powerful cause. See, e.g., FUCK scriptive’’ or ‘‘geographically descrip- HEROIN, Appl. No. 86,361,326; FUCK tive’’—the immoral or scandalous provision CANCER, Appl. No. 86,290,011; FUCK targets a mark’s expressive message, RACISM, Appl. No. 85,608,559. It can put which is separate and distinct from the forth a political view, see DEMOCRAT.BS, commercial purpose of a mark as a source Appl. No. 77,042,069, or REPUBLI- identifier. Justice Kennedy explained in his CAN.BS, Appl. No. 77,042,071. While the concurrence: ‘‘The central purpose of speech expressed in trademarks is brief, trademark registration is to facilitate ‘‘powerful messages can sometimes be con- source identificationTTTT Whether a mark veyed in just a few words.’’ Tam, 137 S. is disparaging bears no plausible relation Ct. at 1760. to that goal.’’ 137 S.Ct. at 1768 (Kennedy, The test used by the PTO to prohibit J.). We find the same logic applies to the immoral or scandalous marks is whether a immoral or scandalous prohibition. As in ‘‘substantial composite of the general pub- the case of disparaging marks, the PTO’s lic’’ 3 would find the mark ‘‘shocking to the rejections under § 2(a)’s bar on immoral sense of truth, decency, or propriety; dis- or scandalous marks are necessarily based graceful; offensive; disreputable; TTT giv- in the government’s belief that the rejecting offense to the conscience or moral ed mark conveys an expressive message— feelings; TTT or calling out for condemna- namely, a message that is scandalous or tion.’’ Fox, 702 F.3d at 665. There can be no question that the immoral or scandalous offensive to a substantial composite of the prohibition targets the expressive compo- general population. See Tam, 808 F.3d at nents of the speech. As in this case, the 1338. Section 2(a) regulates the expressive agency often justifies its rejection of components of speech, not the commercial marks on the grounds that they convey components of speech, and as such it offensive ideas. J.A. 8–9 (explaining that should be subject to strict scrutiny. See Mr. Brunetti’s use of his trademark is Sorrell v. IMS Health Inc., 564 U.S. 552, scandalous because his mark ‘‘objectifies 565, 131 S.Ct. 2653, 180 L.Ed.2d 544 women and offers degrading examples of (2011). There is no dispute that § 2(a)’s extreme misogyny’’ and contains a theme bar on the registration of immoral or scan- ‘‘of extreme nihilism’’ with ‘‘anti-social im- dalous marks is unconstitutional if strict agery’’ and is ‘‘lacking in taste’’). These are scrutiny applies.

3. The PTO justifies its refusals by ‘‘tying cen- ence.’’ See Tam, 137 S.Ct. at 1766 (Kennedy, sorship to the reaction of the speaker’s audi- J.). 21a

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4. Section 2(a)’s Bar on Immoral and not be misleading.’’ 447 U.S. at 566, or Scandalous Marks Does Not 100 S.Ct. 2343. Section 2(a)’s provision bar- Survive Intermediate Scrutiny ring immoral or scandalous marks, like the [30] Section 2(a)’s bar on the registra- disparagement provision, does not address tion of immoral or scandalous marks is misleading, deceptive, or unlawful marks. unconstitutional even if treated as a regu- Rather it is concerned with whether a lation of purely commercial speech re- mark is offensive, scandalous, or vulgar to viewed according to the intermediate scru- a substantial composite of the general pub- tiny framework established in Central lic. Hudson, 447 U.S. at 566, 100 S.Ct. 2343. [33] Central Hudson’s second prong, Intermediate scrutiny requires that ‘‘the requiring a substantial government inter- State must show at least that the statute est, is not met. The only government inter- directly advances a substantial governmen- est related to the immoral or scandalous tal interest and that the measure is drawn provision that we can discern from the to achieve that interest.’’ Sorrell, 564 U.S. government’s briefing is its interest in at 572, 131 S.Ct. 2653. ‘‘protecting public order and morality.’’ [31, 32] Commercial speech is subject Gov’t Letter Br. 15 & n.6, In re Brunetti, to a four-part test which asks whether (1) No. 15–1109, Docket No. 60 (Fed. Cir. July the speech concerns lawful activity and is 20, 2017).4 At oral argument, the govern- not misleading; (2) the asserted government struggled to identify the substantial ment interest is substantial; (3) the regula- interest in barring registration of trade- tion directly advances that government in- marks comprising immoral or scandalous terest; and (4) whether the regulation is subject matter. The government framed its ‘‘not more extensive than necessary to interest based on the government’s own serve that interest.’’ Central Hudson, 447 perception of proposed marks, including U.S. at 566, 100 S.Ct. 2343; see also Bd. of what types of marks the government Tr. of State Univ. of N.Y. v. Fox, 492 U.S. would ‘‘want to promote’’ or ‘‘has deemed 469, 479–80, 109 S.Ct. 3028, 106 L.Ed.2d to be most suitable.’’ Oral Arg. at 22:35–41, 388 (1989) (explaining the fourth prong of 22:56–23:00. At another point, the govern- Central Hudson requires ‘‘not necessarily ment indicated its interest is to shield its the least restrictive means but TTT a examiners from immoral or scandalous means narrowly tailored to achieve the marks: ‘‘whether or not its examiners are desired objective’’). ‘‘Under a commercial forced to decide whether one drawing of speech inquiry, it is the State’s burden to genitalia is confusingly similar to another justify its content-based law as consistent drawing of genitalia.’’ Id. at 21:51–22:12. with the First Amendment.’’ Sorrell, 564 Ultimately, the government stated, ‘‘Con- U.S. at 565, 131 S.Ct. 2653. gress’ primary interest is the promotion of The immoral or scandalous provision the use of non-scandalous marks in com- clearly meets the first prong of the Central merce.’’ Id. at 23:33–42; see also id. at Hudson test, which requires we first con- 25:21–32 (‘‘Promoting commerce that firm the speech ‘‘concern lawful activity doesn’t include the use of source identifiers

4. The government’s brief also made an errant stantiality of this interest, the government has reference to its interest ‘‘in the orderly flow of failed to articulate how this interest is in any commerce.’’ Gov’t Letter Br. 15, In re Brunet- way advanced by the immoral or scandalous ti, No. 15–1109, Docket No. 60 (Fed. Cir. July prohibition, or how that provision is narrowly 20, 2017). While we do not question the sub- tailored to that interest. 22a

IN RE BRUNETTI 1351 Cite as 877 F.3d 1330 (Fed. Cir. 2017)

that are graphic sexual images or profani- omitted)); Cohen v. California, 403 U.S. 15, ties that are going to be off-putting to a 21, 91 S.Ct. 1780, 29 L.Ed.2d 284 (1971) substantial composite of the public.’’). (‘‘[T]he mere presumed presence of unwit- Whichever articulation of the government’s ting listeners or viewers does not serve interest we choose, the government has automatically to justify curtailing all failed to identify a substantial interest jus- speech capable of giving offense.’’); Cox, tifying its suppression of immoral or scan- 379 U.S. at 551 (‘‘[C]onstitutional rights dalous trademarks.5 may not be denied simply because of hos- tility to their assertion or exercise.’’). First, the government does not have a ‘‘Where the designed benefit of a content- substantial interest in promoting certain based speech restriction is to shield the trademarks over others. The Supreme sensibilities of listeners, the general rule is Court rejected the government’s claim that that the right of expression prevails, even trademarks are government speech. Tam, where no less restrictive alternative ex- 137 S.Ct. at 1757–61. Our conclusion that ists.’’ Playboy, 529 U.S. at 813, 120 S.Ct. trademark registration is neither a govern- 1878. ment subsidy nor a limited public forum forecloses any remaining interest the gov- The Supreme Court’s decision in Tam ernment may have in approving only supports our conclusion that the govern- marks it ‘‘has deemed to be most suitable.’’ ment’s interest in protecting the public Oral Arg. at 22:56–23:00; see also Tam, 137 from off-putting marks is an inadequate S.Ct. at 1760–63 (plurality rejecting the government interest for First Amendment government subsidy argument) (Alito, J.). purposes. See, e.g., 137 S.Ct. at 1764 (ap- plying Central Hudson and rejecting the [34, 35] Second, Supreme Court prece- government’s ‘‘interest in preventing dent makes clear that the government’s speech expressing ideas that offend’’ be- general interest in protecting the public cause ‘‘that idea strikes at the heart of from marks it deems ‘‘off-putting,’’ wheth- the First Amendment’’) (Alito, J.). In er to protect the general public or the Tam, the Court acknowledged that it is a government itself, is not a substantial in- ‘‘bedrock First Amendment principle’’ terest justifying broad suppression of that ‘‘Speech may not be banned on the speech. ‘‘[T]he fact that society may find ground that it expresses ideas that of- speech offensive is not a sufficient reason fend.’’ Tam, 137 S.Ct. at 1751 (Alito, J.); for suppressing it.’’ Hustler Magazine, see also id. at 1767 (‘‘[T]he Court’s cases Inc. v. Falwell, 485 U.S. 46, 55, 108 S.Ct. have long prohibited the government from 876, 99 L.Ed.2d 41 (1988); Bolger v. justifying a First Amendment burden by Youngs Drug Prods. Corp., 463 U.S. 60, pointing to the offensiveness of the 71, 103 S.Ct. 2875, 77 L.Ed.2d 469 (1983) speech to be suppressed.’’) (Kennedy, J.). (‘‘At least where obscenity is not involved, Both Justice Alito’s and Justice Kenne- we have consistently held that the fact that dy’s opinions support their conclusions protected speech may be offensive to some that the disparagement provision is un- does not justify its suppression.’’ (citation constitutional citing cases holding ‘‘the

5. We note that the government hardly met its circular defense can sidestep judicial review burden to identify a government interest at of almost any statute, because it makes all all. To identify this purported interest, the statutes look narrowly tailored.’’ Simon & government has done no more than ‘‘taken Schuster, Inc. v. Members of N.Y. State Crime the effect of the statute and posited that effect Victims Bd., 502 U.S. 105, 120, 112 S.Ct. 501, as the State’s interest. If accepted, this sort of 116 L.Ed.2d 476 (1991). 23a

1352 877 FEDERAL REPORTER, 3d SERIES public expression of ideas may not be not appear to involve viewpoint discrimina- prohibited merely because the ideas are tion at all. For example, Hustler Magazine themselves offensive to some of their concerned a parody interview of Jerry Fal- hearers.’’ Id. at 1763 (collecting cases) well in which the actor playing him stated (quoting Street v. New York, 394 U.S. 576, his ‘‘ ‘first time’ was during a drunken 592, 89 S.Ct. 1354, 22 L.Ed.2d 572 (1969)) incestuous rendezvous with his mother in (Alito, J.); id. at 1767 (citing Justice Ali- an outhouse.’’ 485 U.S. at 48, 108 S.Ct. 876. to’s opinion at 1763–64) (Kennedy, J.); see While such a parody interview is offensive, also Texas v. Johnson, 491 U.S. 397, 414, its function as a parody does not clearly 109 S.Ct. 2533, 105 L.Ed.2d 342 (1989) involve the expression of beliefs, ideas, or (‘‘If there is a bedrock principle underly- perspectives. Similarly, the ordinance at ing the First Amendment, it is that the issue in Coates was not limited to restrict- government may not prohibit the expres- ing disparaging speech or certain view- sion of an idea simply because society points, but prohibited any conduct per- finds the idea itself offensive or disagree- ceived as ‘‘annoying to persons passing able.’’); Coates v. Cincinnati, 402 U.S. by.’’ 402 U.S. at 611, 91 S.Ct. 1686. The 611, 615, 91 S.Ct. 1686, 29 L.Ed.2d 214 Supreme Court’s narrative that the gov- (1971) (‘‘[M]ere public intolerance or ani- ernment cannot justify restricting speech mosity cannot be the basis for abridgment because it offends, together with its reli- of these constitutional freedoms.’’). The ance on cases involving a variety of differ- government’s interest in suppressing ent speech restrictions, reinforce our con- speech because it is off-putting is unavail- clusion that the government’s interest in ing. protecting the public from off-putting While the government’s interest in Tam marks is not substantial. related to a viewpoint-based restriction on speech, we note the cases on which the Finally, the government does not have a Supreme Court relied are not so limited. substantial interest in protecting the public The cases cited in Tam are directed to from scandalousness and profanities. The speech that may be offensive, but not all government attempts to justify this inter- involve speech that is disparaging or view- est by pointing to the Supreme Court’s point discriminatory. Many involve speech decision in FCC v. Pacifica Foundation, that, rather than disparaging others, in- 438 U.S. 726, 98 S.Ct. 3026, 57 L.Ed.2d volved peaceful demonstrations. See, e.g., 1073 (1978). In Pacifica, the Supreme Bachellar v. Maryland, 397 U.S. 564, 566– Court upheld the constitutionality of the 67, 90 S.Ct. 1312, 25 L.Ed.2d 570 (1970) FCC’s declaratory order determining that (peaceful Vietnam war protest carrying an afternoon radio broadcast of George signs such as ‘‘Make Love not War’’); Carlin’s ‘‘Filthy Words’’ monologue was Tinker v. Des Moines Indep. Cmty. Sch. indecent and potentially sanctionable. Id. Dist., 393 U.S. 503, 509–14, 89 S.Ct. 733, 21 at 730–32, 98 S.Ct. 3026. The Court ex- L.Ed.2d 731 (1969) (wearing black arm- plained ‘‘references to excretory and sexu- bands to protest Vietnam war); Cox v. al material TTT surely lie at the periphery Louisiana, 379 U.S. 536, 545, 550–51, 85 of First Amendment concern.’’ Id. at 742, S.Ct. 453, 13 L.Ed.2d 471 (1965) (protest- 98 S.Ct. 3026. The Court justified the ing segregation and discrimination); De FCC’s order, however, because radio Jonge v. Oregon, 299 U.S. 353, 365, 57 broadcasting has ‘‘a uniquely pervasive S.Ct. 255, 81 L.Ed. 278 (1937) (peaceful presence in the lives of all Americans’’ and political meeting). Several other cases do is ‘‘uniquely accessible to children, even 24a

IN RE BRUNETTI 1353 Cite as 877 F.3d 1330 (Fed. Cir. 2017) those too young to read,’’ confronting S.Ct. 1878 (First Amendment right to view Americans ‘‘in the privacy of the home, ‘‘sexually explicit adult programming or where the individual’s right to be left alone other programming that is indecent’’); Sa- plainly outweighs the First Amendment ble, 492 U.S. at 115, 109 S.Ct. 2829 (‘‘Sexu- rights of an intruder.’’ Id. at 749, 98 S.Ct. al expression which is indecent but not 3026. The Court stressed: ‘‘It is appropri- obscene is protected by the First Amend- ate to emphasize the narrowness of our ment.’’). In crafting a substantial govern- holding.’’ Id. at 750, 98 S.Ct. 3026. Subse- ment interest, ‘‘the government may not quent precedent explained that other me- ‘reduce the adult population TTT to TTT diums of communication, such as dial-in- only what is fit for children.’ ’’ Bolger, 463 services or the Internet, are ‘‘manifestly U.S. at 73, 103 S.Ct. 2875 (citation omit- different from a situation in which a listen- ted); cf. Sable, 492 U.S. at 131, 109 S.Ct. er does not want the received message.’’ 2829 (‘‘[T]he statute’s denial of adult ac- Sable Commc’ns of Cal., Inc. v. FCC, 492 cess to telephone messages which are inde- U.S. 115, 128, 109 S.Ct. 2829, 106 L.Ed.2d cent but not obscene far exceeds that 93 (1989) (‘‘Unlike an unexpected outburst which is necessary to limit the access of on a radio broadcast, the message received minors to such messages TTTT’’). by one who places a call to a dial-a-porn [37] Even if we were to hold that the service is not so invasive or surprising that government has a substantial interest in it prevents an unwilling listener from protecting the public from scandalous or avoiding exposure to it.’’); Reno v. Am. immoral marks, the government could not Civil Liberties Union, 521 U.S. 844, 868– meet the third prong of Central Hudson, 69, 117 S.Ct. 2329, 138 L.Ed.2d 874 (1997) which requires the regulation directly ad- (explaining Pacifica does not control be- vance the government’s asserted interest. cause ‘‘the Internet is not as ‘invasive’ as 447 U.S. at 566, 100 S.Ct. 2343. As the radio or television’’). government has repeatedly exhorted, [36] The government’s interest in pro- § 2(a) does not directly prevent applicants tecting the public from profane and scan- from using their marks. Regardless of whether a trademark is federally regis- dalous marks is not akin to the govern- tered, an applicant can still brand clothing ment’s interest in protecting children and with his mark, advertise with it on the other unsuspecting listeners from a bar- television or radio, or place it on billboards rage of swear words over the radio in along the highway. In this electronic/Inter- Pacifica. A trademark is not foisted upon net age, to the extent that the government listeners by virtue of its being registered. seeks to protect the general population Nor does registration make a scandalous from scandalous material, with all due re- mark more accessible to children. Absent spect, it has completely failed. any concerns that trademark registration invades a substantial privacy interest in an [38] Finally, no matter the govern- intolerable manner, the government’s in- ment’s interest, it cannot meet the fourth terest amounts to protecting everyone, in- prong of Central Hudson. The PTO’s including adults, from scandalous content. consistent application of the immoral or But even when ‘‘many adults themselves scandalous provision creates an ‘‘uncertain- would find the material highly offensive,’’ ty [that] undermines the likelihood that adults have a First Amendment right to the [provision] has been carefully tailored.’’ view and hear speech that is profane and See Reno, 521 U.S. at 871, 117 S.Ct. 2329. scandalous. Playboy, 529 U.S. at 811, 120 Nearly identical marks have been ap- 25a

1354 877 FEDERAL REPORTER, 3d SERIES proved by one examining attorney and re- (adult online services), BACKROOM jected as scandalous or immoral by anoth- MILF (adult online services), FAT MILF er. The PTO registered the mark FUGLY (sandwich), and MILF NEXT DOOR for use on clothing, but refused registra- (adult online services). Id. Another empiri- tion for use on alcoholic beverages. Com- cal study identified words that served as pare Reg. No. 5,135,615, with Appl. No. the basis of a § 2(a) refusal in some marks 78,866,347. See also COCAINE, Appl. No. but were material components of other 78,829,207 (rejected), COCAINE, Reg. No. marks approved by the PTO. The authors 1,340,874 (accepted). The PTO registered found that to the extent there are general NO BS! BRASS, Reg. No. Reg. No. 5,053,- trends in the PTO’s treatment of the offen- 827, for entertainment services but reject- sive terms, ‘‘those general trends are ap- ed NO BS ZONE, Appl. No. 76,626,390, parently inconsistent with one another.’’ v for internet training. NO $#! , Appl. No. Meghan M. Carpenter & Mary Garner, 85,855,449, was rejected, but $#*! MY NSFW: An Empirical Study of Scandal- DAD SAYS, Reg. No. 4,142,745, was al- ous Trademarks, 33 Cardozo Arts & Ent. lowed. See also ROLL TURD, Appl. No. L.J. 321, 356–61 (2015). Even marks that 86,448,988 (rejected), TURD HERDERS, reference the indisputably vulgar term Reg. No. 5,180,286 (registered). Although ‘‘fuck,’’ like the mark at issue here, are not the language in these marks is offensive, always rejected as a matter of course. The we cannot discern any pattern indicating PTO registered the mark FCUK, but re- when the incorporation of an offensive jected the marks FUCT and F**K PRO- term into a mark will serve as a bar to JECT as scandalous. It allowed the regis- registration and when it will not. tration of MUTHA EFFIN BINGO, Reg. One commentator has written that, of No. 4,183,272, and IF WE TOUCH IT, the forty marks containing the acronym IT’S FN GOLDEN, Reg. No. 4,100,978, MILF for which written records were but not F ALL F’S APPAREL FOR THE available as of 2011, twenty marks re- F’N ANGRY, Appl. No. 78,420,315.6 ceived an office action refusing registration based on § 2(a), while twenty did not. The Trademark Trial and Appeal Board Anne Gilson LaLonde & Jerome Gilson, has itself noted the vague and subjective Trademarks Laid Bare: Marks That May nature of the scandalous inquiry. In re In Be Scandalous or Immoral, 101 Trade- Over Our Heads, Inc., 1990 WL 354546 at mark Rep. 1476, 1478–82 (2011). It is diffi- *1 (‘‘[T]he guidelines for determining cult to understand what distinguished the whether a mark is scandalous or disparag- refused marks, which included GOT MILF ing are somewhat vague and the determi- (clothing), MILF MANIA (adult online nation of whether a mark is scandalous or services), MILF SEEKER (adult enter- disparaging is necessarily a highly subjec- tainment services), and FROM SOCCER tive one.’’). It can no doubt be a difficult MOM TO MILF (self-help books for wom- task to determine public perceptions of a en), from the marks which were regis- trademark’s morality or immorality, offen- tered, including DIARY OF A MILF siveness, or even vulgarity. As the Su-

6. The PTO’s inconsistent rejections under the tifying examples ‘‘where there is no conceiva- immoral or scandalous provision also raise ble difference between the applied-for marks, concerns about the provision’s vagueness. See yet one is approved and the other rejected’’). Tam, 808 F.3d at 1359 (O’Malley, J., concur- We need not reach whether the immoral or ring) (opining that § 2(a)’s bar on disparaging scandalous provision is so vague that it vio- marks was unconstitutionally vague and iden- lates the Fifth Amendment. 26a

IN RE BRUNETTI 1355 Cite as 877 F.3d 1330 (Fed. Cir. 2017) preme Court has explained, ‘‘it is largely that men of common intelligence could not because governmental officials cannot have realized the law’s limited scope at the make principled distinctions in this area only relevant time, when their acts were that the Constitution leaves matters of committed, or if the law remains excessive- taste and style so largely to the individu- ly sweeping even as narrowed.’’ Gregory v. al.’’ Cohen, 403 U.S. at 25, 91 S.Ct. 1780. City of Chi., 394 U.S. 111, 121, 89 S.Ct. To be sure, there are other trademark’s 946, 22 L.Ed.2d 134 (1969) (citations omit- whose offensiveness cannot be reasonably ted). Our duty to avoid constitutional ques- questioned; the government attached an tions ‘‘is not a license for the judiciary to appendix with examples of such marks rewrite language enacted by the legisla- which it has rejected to this court. But the ture. Any other conclusion, while purport- subjectivity in the determination of what is ing to be an exercise in judicial restraint, immoral or scandalous and the disparate would trench upon the legislative powers and unpredictable application of these vested in Congress.’’ United States v. Al- principles cause us to conclude that the bertini, 472 U.S. 675, 680, 105 S.Ct. 2897, prohibition at issue in this case would also 86 L.Ed.2d 536 (1985) (citations omitted). fail the fourth prong of the Central Hud- It is thus permissible to construe a statute son analysis. in a manner that preserves its constitutionality only where the construction is We conclude that the government has reasonable. not presented us with a substantial government interest justifying the § 2(a) bar The concurrence agrees that the scan- on immoral or scandalous marks. As we dalous and immoral prohibitions as con- concluded in Tam, ‘‘All of the govern- strued by the government, this court, and ment’s proffered interests boil down to our predecessor court are unconstitutional. permitting the government to burden This court and its predecessor have consis- speech it finds offensive.’’ Tam, 808 F.3d tently defined ‘‘scandalous’’ as ‘‘shocking to at 1357. We also conclude that the govern- the sense of truth, decency, or propriety; ment has failed to demonstrate that its disgraceful; offensive; disreputable; giving restriction will advance the interests it as- offense to the conscience or moral feelings; serts and that it is narrowly tailored to or calling out for condemnation.’’ Fox, 702 achieve that objective. Section 2(a)’s bar on F.3d at 635; accord McGinley, 660 F.2d at immoral or scandalous marks does not sur- 485; Riverbank Canning Co., 95 F.3d at vive intermediate scrutiny under Central 328. The concurrence proposes that we Hudson. ‘‘narrow the immoral-scandalous provision’s scope to obscene marks in order to 5. There Is No Reasonable Definition of preserve its constitutionality.’’ Conc. Op. the Statutory Terms Scandalous and 5–6. While the legislature could rewrite the Immoral Which Would Preserve Their statute to adopt such a standard, we can- Constitutionality not. [39–41] We construe statutes narrowly [42] It is not reasonable to construe to preserve their constitutionality, when the words immoral and scandalous as con- possible. See Schneider v. Smith, 390 U.S. fined to obscene material. There is no dis- 17, 26, 88 S.Ct. 682, 19 L.Ed.2d 799 (1968). pute that an obscene mark would be However, ‘‘[t]he infringement of First scandalous or immoral; however, not all Amendment rights will not be cured if the scandalous or immoral marks are ob- narrowing construction is so unforeseeable scene. All apples are fruit, but not all 27a

1356 877 FEDERAL REPORTER, 3d SERIES

fruits are apples. As the PTO has ex- and principles of morality which regard plained, ‘‘the threshold for objectionable men as living in a community, and which matter is lower for what can be described are necessary for the public welfare, order, as ‘scandalous’ than for ‘obscene.’ ’’ J.A. 4 and decency.’’); Immoral, Webster’s Colle- (citation omitted); accord McGinley, 660 giate Dictionary (1898) (‘‘Not moral; in- F.2d at 487 n.9. The PTO has for a centu- consistent with good morals; contrary to ry rejected marks as scandalous or im- conscience or the divine law.’’); Scandal- moral that are clearly not obscene. As set ous, Id. (‘‘1. Giving offense to the con- forth above, many of the early cases ap- science or moral feelings. 2. Disgraceful to plying the immoral or scandalous provi- reputation; opprobrious. 3. Defamatory; li- sion involved blasphemous marks touch- belous.’’); Immoral, Webster’s Complete ing on religion, which were not obscene.7 Dictionary (1886) (‘‘Not moral; inconsis- The Supreme Court has made clear that tent rectitude; contrary to conscience or the definition of obscenity for purposes of the divine law; wicked; unjust; dishonest; the First Amendment is ‘‘material which vicious’’); Scandalous, Id. (‘‘1. Giving of- deals with sex in a manner appealing to fense; exciting reprobation; calling out con- prurient interest,’’ i.e., ‘‘material having a demnation; extremely offensive to duty or tendency to excite lustful thoughts.’’ Roth propriety’’ ‘‘2. Disgraceful to reputation; v. United States, 354 U.S. 476, 487 & n.20, bringing shame or infamy; opprobrious’’ 77 S.Ct. 1304, 1 L.Ed.2d 1498 (1957). This ‘‘3. Defamatory; libelous’’). ‘‘definition does not reflect the precise Unlike the terms ‘‘immoral’’ and ‘‘scan- meaning of ‘obscene’ as traditionally used dalous,’’ the statutory terms at issue in the in the English language,’’ and instead is cases cited in the concurrence are by their limited to ‘‘obscene material ‘which deals nature limited to material ‘‘which deals with sex.’ ’’ Miller v. California, 413 U.S. with sex.’’ See, e.g., Brockett v. Spokane 15, 20 n.2, 93 S.Ct. 2607, 37 L.Ed.2d 419 Arcades, Inc., 472 U.S. 491, 494, 105 S.Ct. (1973) (emphasis added). 2794, 86 L.Ed.2d 394 (1985) (construing Despite the concurrence’s suggestion to phrase ‘‘that which incites lasciviousness or the contrary, none of the dictionary defini- lust’’); Manual Enters., Inc. v. Day, 370 tions cited define ‘‘immoral’’ or ‘‘scandal- U.S. 478, 482–83, 82 S.Ct. 1432, 8 L.Ed.2d ous’’ in sexual terms.8 Immoral, Black’s 639 (1962) (opinion of Harlan, J.) (‘‘While Law Dictionary (1st ed. 1891) (‘‘Contrary in common usage the words have different to good morals; inconsistent with the rules shades of meaning, the statute since its

7. With no authority, the concurrence suggests the concurrence, like the FUCT mark at issue ‘‘the central aim of the immoral-scandalous in this case, would not be properly refused provision TTT has been sexual material.’’ under a prohibition limited to obscenity. See Conc. Op. 1359–60. To the contrary, there is a Conc. Op. 1360 n.7. long history of rejecting numerous categories of non-sexual material under this provision. 8. The concurrence’s reliance on overlapping See generally LaLonde & Gilson, supra, at dictionary definitions of ‘‘immoral,’’ ‘‘scandal- 1510–14, 1517–33 (discussing the application ous,’’ and ‘‘obscene’’ ignores this important of the provision to marks related to religion, limitation. The question before us is not drug references, violence, disparaging patriot- whether the obscene material is ‘‘immoral’’ ic symbols, mild profanity, and scatological and ‘‘scandalous,’’ but rather whether Con- references). Moreover, the concurrence sug- gress intended the terms ‘‘immoral’’ or ‘‘scan- gests narrowing the immoral or scandalous dalous’’ to be confined to material that is provision to obscene material would be con- ‘‘obscene’’ for the purposes of a First Amend- sistent with PTO action. The marks cited by ment analysis. 28a

IN RE BRUNETTI 1357 Cite as 877 F.3d 1330 (Fed. Cir. 2017) inception has always been taken as aimed context of a registration program such as at obnoxiously debasing portrayals of sex.’’ the one at issue in this case. (footnote omitted)); Swearingen v. United We hold that the bar in § 2(a) against States, 161 U.S. 446, 451, 16 S.Ct. 562, 40 immoral or scandalous marks is unconsti- L.Ed. 765 (1896) (‘‘The words ‘obscene,’ tutional because it violates the First ‘lewd,’ and ‘lascivious,’ as used in the stat- Amendment. We reverse the Board’s hold- ute, signify that form of immorality which ing that Mr. Brunetti’s mark is unregistra- has relation to sexual impurity TTTT’’). We ble under § 2(a). do not see how the words ‘‘immoral’’ and REVERSED ‘‘scandalous’’ could reasonably be read to be limited to material of a sexual nature. DYK, Circuit Judge, concurring in the We cannot stand in the shoes of the legis- judgment. lature and rewrite a statute. The majority today strikes down as unconstitutional a century-old provision of CONCLUSION the Lanham Act that prohibits the regis- TTT The trademark at issue is vulgar. And tration of ‘‘immoral or scandalous’’ the government included an appendix in its marks. 15 U.S.C. § 1052(a). In doing so, it briefing to the court which contains nu- notes our obligation to ‘‘construe statutes merous highly offensive, even shocking, narrowly to preserve their constitutionali- images and words for which individuals ty, when possible.’’ Maj. Op. 1355. It con- have sought trademark registration. Many cludes, however, that there is no such rea- of the marks rejected under § 2(a)’s bar sonable narrow construction. Id. at 1355– on immoral or scandalous marks, including 57. I think that such a saving construction the marks discussed in this opinion, are is possible and that we are obligated to lewd, crass, or even disturbing. We find adopt it. the use of such marks in commerce dis- As an initial matter, I agree with the comforting, and are not eager to see a majority that the Supreme Court’s recent proliferation of such marks in the market- decision in Matal v. Tam, ––– U.S. ––––, place. There are, however, a cadre of simi- 137 S.Ct. 1744, 198 L.Ed.2d 366 (2017), larly offensive images and words that have does not dictate the facial invalidity of the secured copyright registration by the gov- immoral-scandalous provision. Tam held ernment. There are countless songs with only that the disparagement provision of vulgar lyrics, blasphemous images, scan- the Lanham Act was unconstitutional be- dalous books and paintings, all of which cause it was not viewpoint neutral; it did are protected under federal law. No doubt not address the immoral-scandalous provi- many works registered with the Copyright sion at issue here. See id. at 1763–65 (plu- Office offend a substantial composite of the rality op.); id. at 1765–69 (Kennedy, J., general public. There are words and im- concurring in part and concurring in the ages that we do not wish to be confronted judgment). So too did the opinions reserve with, not as art, nor in the marketplace. judgment as to the other Lanham Act The First Amendment, however, protects provisions. Id. at 1763 n.16 (plurality op.) private expression, even private expression (‘‘We leave open the question whether this which is offensive to a substantial compos- is the appropriate framework for analyzing ite of the general public. The government free speech challenges to provisions of the has offered no substantial government in- Lanham Act.’’); id. at 1768 (Kennedy, J.) terest for policing offensive speech in the (‘‘This case does not present the question 29a

1358 877 FEDERAL REPORTER, 3d SERIES of how other provisions of the Lanham Act ferred that each of those epithets pointed should be analyzed under the First out a distinct offense’’—the familiar canon Amendment.’’). Nonetheless, I also agree against superfluities—the Court neverthe- that the immoral-scandalous provision rais- less construed the statute narrowly to es some serious First Amendment ques- ‘‘describ[e] one and the same offense,’’ tions, as the majority opinion concludes. namely, the mailing of obscene materials. 1 See Maj. Op. 1349–55. Id. I think that we are obligated to construe The obscenity statutes were later the statute to avoid these constitutional questions. Courts must, ‘‘where possible, amended to include an even broader de- construe federal statutes so as ‘to avoid scription of the targeted matter. Today, 18 serious doubt of their constitutionality.’ ’’ U.S.C. § 1461 criminalizes the mailing of Stern v. Marshall, 564 U.S. 462, 477, 131 any ‘‘obscene, lewd, lascivious, indecent, S.Ct. 2594, 180 L.Ed.2d 475 (2011) (quot- filthy or vile article,’’ and § 1462 criminal- ing Commodity Futures Trading Comm’n izes the importation of ‘‘obscene, lewd, las- v. Schor, 478 U.S. 833, 841, 106 S.Ct. 3245, civious, or filthy’’ materials. Nonetheless, 92 L.Ed.2d 675 (1986)). A saving construc- in a series of opinions in the 1960s tion of a statute need only be ‘‘fairly possi- and ’70s, the Supreme Court construed ble,’’ and ‘‘every reasonable construction this broader language narrowly to apply must be resorted to.’’ Nat’l Fed’n of Indep. only to obscenity in order to avoid consti- Bus. v. Sebelius, 567 U.S. 519, 563, 132 tutional doubts. See Hamling v. United S.Ct. 2566, 183 L.Ed.2d 450 (2012) (first States, 418 U.S. 87, 114, 94 S.Ct. 2887, 41 quoting Crowell v. Benson, 285 U.S. 22, 62, L.Ed.2d 590 (1974) (limiting § 1461 to ob- 52 S.Ct. 285, 76 L.Ed. 598 (1932); then scenity to avoid a vagueness challenge); quoting Hooper v. California, 155 U.S. United States v. 12 200–Ft. Reels of Super 648, 657, 15 S.Ct. 207, 39 L.Ed. 297 (1895)). 8mm. Film, 413 U.S. 123, 129–30, 130 n.7, One such fairly possible reading is avail- 93 S.Ct. 2665, 37 (L.Ed.2d 500 1973) (same able to us here by limiting the clause’s with respect to § 1462); Manual Enters., reach to obscene marks, which are not Inc. v. Day, 370 U.S. 478, 482–83, 82 S.Ct. protected by the First Amendment. Where 1432, 8 L.Ed.2d 639 (1962) (plurality op.) the regulation of speech is concerned, the (footnote omitted) (‘‘While in common us- Supreme Court has a long history of nar- age the words have different shades of rowing the scope of similarly worded stat- meaning, the statute since its inception has utes to cover only obscene speech. The always been taken as aimed at obnoxiously most prominent examples are the federal debasing portrayals of sex.’’). The Su- obscenity statutes. In 1896, the Supreme preme Court took a similar approach when Court considered an early version of these rejecting an overbreadth challenge to a laws, which criminalized the mailing of Washington statute that defined ‘‘prurient’’ ‘‘obscene, lewd or lascivious’’ materials. as ‘‘that which incites lasciviousness or Swearingen v. United States, 161 U.S. 446, lust,’’ Brockett v. Spokane Arcades, Inc., 450, 16 S.Ct. 562, 40 L.Ed. 765 (1896). 472 U.S. 491, 494, 105 S.Ct. 2794, 86 While acknowledging that ‘‘it might be in- L.Ed.2d 394 (1985), construing the stat-

1. The majority states that I ‘‘agree[ ] that the preme Court’s instructions, I would adopt a scandalous and immoral prohibitions TTT are narrowing construction specifically in order unconstitutional.’’ Id. at 38, 93 S.Ct. 2607. As to avoid these difficult constitutional ques- discussed more fully below, following the Su- tions. 30a

IN RE BRUNETTI 1359 Cite as 877 F.3d 1330 (Fed. Cir. 2017) ute’s reference to lust to reach only ob- word ‘‘obscene’’ to differentiate ‘‘immoral’’ scenity, id. at 504–05, 105 S.Ct. 2794.2 and ‘‘scandalous’’ material from obscenity.4 And the fact that the immoral-scandalous As the Supreme Court has done with the provision may appear to be broader than obscenity statutes, here when faced with obscenity does not preclude our adopting a constitutional doubt as to the immoral- narrowing construction of the statute. Con- scandalous provision, we should adopt a temporary dictionaries from the period be- narrowing construction and limit the stat- fore the 1905 enactment of the provision ute to obscenity.3 As in the earlier Su- suggest that ‘‘immoral’’ and ‘‘scandalous’’ preme Court cases, there is no question were understood as equivalent to ‘‘ob- that the trademark statute bars registra- scene.’’ For example, ‘‘obscene’’ was itself tion of obscene marks. While the statute listed as a synonym for ‘‘immoral.’’ 5 does not use the word ‘‘obscene’’ to define Under these circumstances, we can ap- its scope, the absence of the word in my propriately narrow the immoral-scandalous view makes a narrowing construction easi- provision’s scope to obscene marks in or- er rather than more difficult, since it sug- der to preserve its constitutionality, and gests that the drafters did not use the we are obligated to do so.6

2. I am aware of only one case in which the were defined in terms of giving offense to Supreme Court declined to construe similar morals, and ‘‘obscene’’ and ‘‘immoral’’ were language as limited to obscenity. FCC v. Paci- specifically defined in opposition to chastity. fica Foundation, 438 U.S. 726, 738–41, 741 Immoral, Webster’s Collegiate Dictionary n.17, 98 S.Ct. 3026, 57 L.Ed.2d 1073 (1978), (‘‘inconsistent with good morals,’’ ‘‘un- having arisen in the broadcasting context, is chaste’’); Obscene, id. (‘‘[o]ffensive to chasti- quite different from the present situation. ty’’); Scandalous, id. (‘‘[g]iving offense to the conscience or moral feelings’’); Immoral, 3. Of course, if this were a state rather than Black’s Law Dictionary (1st ed. 1891) federal statute, the different standard for nar- (‘‘[c]ontrary to good morals’’); Obscene, id. rowing constructions might dictate a different (‘‘calculated to shock the moral sense of result. See, e.g., Conchatta Inc. v. Miller, 458 man by a disregard of chastity or modesty’’); F.3d 258, 263–65 (3d Cir. 2006). Immoral, Webster’s Complete Dictionary (‘‘[n]ot moral,’’ ‘‘unchaste’’); Obscene, id. 4. Our predecessor court noted that ‘‘the (‘‘[o]ffensive to chastity and delicacy’’); Scan- threshold for objectionable matter is lower for dalous, id. (‘‘[g]iving offense’’). Finally, ‘‘im- what can be described as ‘scandalous’ than moral’’ and ‘‘obscene’’ shared a number of for ‘obscene,’ ’’ which suggests that any other synonyms, including ‘‘lewd,’’ ‘‘im- marks meeting the threshold for obscenity pure,’’ and ‘‘indecent.’’ Immoral, Webster’s would also be considered scandalous. In re Collegiate Dictionary (‘‘impure,’’ ‘‘lewd’’); McGinley, 660 F.2d 481, 485 n.9 (CCPA Obscene, id. (‘‘indecent; impure; lewd’’); Im- 1981), overruled on other grounds by In re Tam, 808 F.3d 1321 (Fed. Cir. 2015) (en moral, Webster’s Complete Dictionary (‘‘im- banc), aff’d, ––– U.S. ––––, 137 S.Ct. 1744, pure,’’ ‘‘lewd’’); Obscene, id. (‘‘[i]mpure,’’ 198 L.Ed.2d 366. To the extent that McGinley ‘‘indecent,’’ ‘‘lewd’’); Obscene, Black’s Law supports a construction of the immoral-scan- Dictionary (‘‘[l]ewd; impure; indecent’’). dalous provision that is broader than just 6. obscenity, we are not bound by that construc- We are under this obligation notwithstand- tion given the constitutional doubts raised in ing the fact that the government has not advo- this case and the intervening changes in the cated for such a narrowing construction. For case law since that 1981 decision, including example, in Spokane Arcades, the Supreme Tam. See, e.g., Troy v. Samson Mfg. Corp., 758 Court adopted a narrowing construction de- F.3d 1322, 1326 (Fed. Cir. 2014). spite the state officials’ arguments that the statute was facially constitutional and not in 5. Immoral, Webster’s Collegiate Dictionary need of narrowing. 472 U.S. at 501–05, 105 (1898); Immoral, Webster’s Complete Dictio- S.Ct. 2794; see also SKF USA, Inc. v. U.S. nary (1886). In addition, all three words Customs & Border Prot., 556 F.3d 1337, 1353 31a

1360 877 FEDERAL REPORTER, 3d SERIES

The majority recognizes that we have an moral-scandalous provision in recent dec- obligation to construe statutes to preserve ades have related to sex.8 The existence of their constitutionality. Maj. Op. 1355. But isolated decisions viewing the provision as the majority provides no plausible reason having a secondary concern with non-sexu- for failure to narrowly construe the lan- al marks 9 cannot make a narrowing con- guage in § 1052(a) to avoid the evident struction inappropriate. Interestingly, the problems created by a broader construc- scholarly analysis of the scandalous-im- tion. To be sure, as the majority points moral provision relied on by the majority out, the words ‘‘immoral’’ and ‘‘scandalous’’ has suggested that an amendment to the could have a broader meaning than ‘‘obscenity,’’ a broader meaning fraught with statute narrowing its scope to obscene constitutional problems. But the potential marks would preserve the core of the pro- breadth of the language is hardly a reason vision.10 to reject a narrowing construction; rather, * * * it is the very reason that a narrowing construction is appropriate. And the ma- The First Amendment does not protect jority offers no convincing basis for distin- obscene speech. E.g., United States v. guishing this case from the Supreme Court Williams, 553 U.S. 285, 288, 128 S.Ct. cases, discussed above, narrowing the con- 1830, 170 L.Ed.2d 650 (2008). Under the struction of very similar language to ob- narrow construction I have proposed, then, scenity. The majority appears to suggest the bar on the registration of obscene that in those Supreme Court cases, the marks would withstand constitutional chal- statutory concern with sexual representa- tions was evident but that here that con- lenge. If Congress wished to expand the nection is absent. In fact, the central aim scope of § 1052(a), it could enact new leg- of the immoral-scandalous provision in this islation, which could then be constitutional- court’s cases has been sexual material rely tested. Without this saving construction, flected in trademarks.7 So too, the vast the majority’s result leaves the govern- majority of PTO rejections under the im- ment with no authority to prevent the

(Fed. Cir. 2009) (‘‘[T]he government’s argu- which the examples of recent rejections are ments [against a saving construction] cannot predominantly sexual references. relieve us of our obligation to construe the Byrd Amendment to avoid a finding of uncon- 9. See, e.g., In re Riverbank Canning Co., 95 stitutionality.’’). F.2d 327 (CCPA 1938) (affirming refusal to 7. See In re Fox, 702 F.3d 633 (Fed. Cir. 2012) register MADONNA mark for wine). Although (affirming refusal to register COCK SUCKER LaLonde and Gilson provide other historical mark for lollipops); McDermott v. S.F. Wom- examples of prior rejections for religious ref- en’s Motorcycle Contingent, 240 Fed.Appx. erences, LaLonde & Gilson, supra, at 1510– 865 (Fed. Cir. 2007) (per curiam) (finding no 13, they also explain that the PTO has since standing to oppose registration of DYKE directed that rejections based on offense to mark); In re Boulevard Entm’t, Inc., 334 F.3d religion should be grounded in the (now-in- 1336 (Fed Cir. 2003) (affirming refusal to validated) disparagement provision rather register JACK–OFF marks); In re Mavety Me- than the scandalous-immoral provision, see dia Grp. Ltd., 33 F.3d 1367 (Fed. Cir. 1994) id. at 1511. (vacating refusal to register BLACK TAIL mark); McGinley, 660 F.2d 481 (affirming re- 10. fusal to register mark depicting genitalia). See id. at 1534 (noting that narrowing ‘‘immoral’’ and ‘‘scandalous’’ to ‘‘obscene’’ would 8. See, for example, Anne Gilson LaLonde & ensure that the provision no longer applies to Jerome Gilson, Trademarks Laid Bare, 101 marks ‘‘at the edges of scandalousness’’). Trademark Rep. 1476, 1510–33 (2011), in 32a

HTC CORP v. CELLULAR COMMUNICATIONS EQUIPMENT, LLC 1361 Cite as 877 F.3d 1361 (Fed. Cir. 2017) registration of even the most patently ob- (2) substantial evidence supported PTAB’s scene marks. finding that combination of prior art references did not render claims obvi- Because there is no suggestion that Mr. Brunetti’s mark is obscene, however, I ous. agree that the decision of the Trademark Affirmed. Trial and Appeal Board must be reversed. For these reasons, I concur in the judg- 1. Patents O1138 ment. The Court of Appeals reviews Patent Trial and Appeal Board (PTAB) decisions in accordance with the Administrative Pro- , cedure Act (APA). 5 U.S.C.A. § 706(2).

2. Patents O1138 Under the Administrative Procedure Act (APA), the Court of Appeals reviews HTC CORPORATION, ZTE the Patent Trial and Appeal Board’s (USA), Inc., Appellants (PTAB) legal conclusions de novo and its factual findings for substantial evidence. 5 v. U.S.C.A. § 706(2). CELLULAR COMMUNICATIONS 3. Patents O1138 EQUIPMENT, LLC, Appellee For purposes of review under the Ad- 2016-1880 ministrative Procedure Act (APA), ‘‘sub- United States Court of Appeals, stantial evidence’’ is such relevant evidence Federal Circuit. as a reasonable mind might accept as adequate to support a conclusion. 5 U.S.C.A. Decided: December 18, 2017 § 706(2). Background: Challenger filed petition for See publication Words and Phrases for other judicial constructions and inter partes review of patent directed to definitions. methods and apparatuses for a radio communications system where a subscriber 4. Patents O1311 station, i.e., a mobile device, was assigned Claim construction serves to define a plurality of codes for transmitting mes- the scope of the patented invention and the sages. The United States Patent and patentee’s right to exclude. Trademark Office, Patent Trial and Appeal O Board (PTAB), No. IPR2014-01134, Wein- 5. Patents 1848 schenk, Administrative Patent Judge, 2016 Claim construction is a question of law WL 98583, determined that patent was not that may be based on underlying factual obvious or anticipated. Challenger appeal- determinations. ed. 6. Patents O1138 Holdings: The Court of Appeals, Reyna, The Court of Appeals reviews the Pat- Circuit Judge, held that: ent Trial and Appeal Board’s (PTAB) con- (1) substantial evidence supported PTAB’s structions based on intrinsic evidence de finding that prior art did not anticipate novo and its factual findings based on ex- patent claims, and trinsic evidence for substantial evidence. Case: 15-1109 Document: 82 Page: 1 Filed: 04/12/2018

33a

NOTE: This order is nonprecedential.

United States Court of Appeals for the Federal Circuit ______

IN RE: ERIK BRUNETTI, Appellant ______

2015-1109 ______

Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board in No. 85310960. ______

ON PETITION FOR REHEARING EN BANC ______

Before PROST, Chief Judge, NEWMAN, LOURIE, DYK, MOORE, O’MALLEY, REYNA, WALLACH, TARANTO, CHEN, HUGHES, and STOLL, Circuit Judges.

PER CURIAM. O R D E R Appellee Andrei Iancu filed a petition for rehearing en banc. A response to the petition was invited by the court and filed by appellant Erik Brunetti. The petition was first referred as a petition for rehearing to the panel that heard the appeal, and thereafter the petition for rehearing en banc was referred to the circuit judges who are in regular active service. Case: 15-1109 Document: 82 Page: 2 Filed: 04/12/2018

34a

2 IN RE: BRUNETTI

Upon consideration thereof,

IT IS ORDERED THAT: The petition for panel rehearing is denied. The petition for rehearing en banc is denied. The mandate of the court will issue on April 19, 2018.

FOR THE COURT

April 12, 2018 /s/ Peter R. Marksteiner Date Peter R. Marksteiner Clerk of Court