Category: Trademarks

Erik Brunetti acquired ownership of a trademark application to register the mark FUCT for apparel. The USPTO refused to register the mark under section 2(a) of the Lanham Act asserting that it was immoral or scandalous. But the Federal Circuit found that the provision banning registration of marks comprising immoral or scandalous matter violated the First Amendment. In re Brunetti, no. 2015-1109 (Fed. Cir. 2017). This clears the way for FUCT to register, unless the government appeals this ruling.

The Brunetti case follows the Matal v. Tam, No. 15-1293 (2017) case where the Supreme Court struct down as violating the First Amendment another provision of section 2(a), which barred the registration of marks consisting of material that is disparaging. The outcome in Brunetti is not surprising in light of Tam.

In Brunetti, the court found that evidence supported that FUCT was vulgar as being a phonic twin of “fucked.” Therefore FUCT was scandalous under section 2(a).

But, the court found that the immoral or scandalous bar of section 2(a) was an unconstitutional content-based restriction on speech.

Trademarks Have Expressive Content

The court noted that marks considered immoral or scandalous can have expressive content. The court cited the following examples of marks espousing a powerful cause: FUCK HEROIN; FUCK CANCER; and FUCK RACISM. And the court noted these marks conveying a political view: DEMOCRAT.BS and REPUBLICAN.BS. The court said that “powerful messages can sometimes be conveyed in just a few words.”

The court found that there is no question that the immoral or scandalous prohibition targets the expressive components of speech. And this content-based restriction is disconnected from the purpose of trademark registration, which is to facilitate the source identification of goods and services and avoid consumer confusion in the marketplace.

There was no dispute that the immoral and scandalous provision could not survive First Amendment strict scrutiny. The court further found that it could not survive intermediate scrutiny.

Trademark registration is not a government subsidy or a limited public forum

The government argued that the First Amendment was not implicated because the trademark registration program is either a government subsidy or a limited public forum. The Court rejected both of these arguments.

On the subsidy issue, the court found that trademark registration does not implicate Congress’ power to spend funds and that the grant of a trademark registration is not a subsidy equivalent.

On the limited public forum issue, the court found that the speech that “flows from trademark registration is not tethered to a public school, a federal workplace, or any other government property.” Further, it said, “If the government can constitutionally restrain the expression of private speech in commerce because such speech is identified in a government database [e.g. the trademark registration database], so too could the government restrain speech occurring on private land or in connection with privately-owned vehicles, simply because those private properties are listed in a database.”

On Judicial Review

The court cited to the article by Anne Gilson LaLonde & Jerome Gilson titled Trademarks Laid Bare: Marks That May Be Scandalous or Immoral, 101 Trademark Rep. 1476 (2011). This article considers the problems of the immoral or scandalous provision and reviews numerous examples of marks rejected and not rejected under that provision. One of the solutions proposed by the article is for Congress to repeal the scandalous and immoral prohibitions from the statute. But the article states:

No lawmaker would be willing to suggest even tinkering with a ban of any sort on immoral or scandalous material. Asking to be tagged as pro-immorality or pro-vulgarity is not a savvy political move. And advocating repeal of a century-old statutory phrase designed to protect public sensibilities would doubtless trigger impassioned opposition.

Therefore, the courts are likely the only place where the scandalous and immoral provision could be addressed.

Public Sensibilities Protected?

But did the immoral or scandalous bar provision really “protect the public sensibilities?” In Brunetti, the government argued that it had a substantial interest in protecting the public from scandalous or immoral marks. But as the court noted, whether a trademark is registered or not, does not stop someone from using such a mark in the marketplace. You can use a mark without registration it. And, the court said:

“In this electronic/Internet age, to the extent that the government seeks to protect the general population from scandalous material, with all due respect, it has completely failed.”

Impact of the Decision

Before this decision, as noted by the court, the marketplace included scandalous material and scandalous marks. In fact, Mr. Brunetti claimed that he operated his clothing brand under the FUCT mark for over 20 years. The lack of registration didn’t stop him from operating all that time and exposing the public to his mark.

After this decision, looking to the trademark registration database, you might see more scandalous, vulgar, or shocking marks. But will that have a great impact?

As the Laid Bare article stated, “The marketplace would ideally deal with the most offensive marks, as consumers would presumably refuse to purchase goods sold under marks that offend them. The American public would continue, as it is now, to be faced with products, services, entertainment and printed matter that are in poor taste and even embarrassing to behold.”

The Court said that “Many of the marks rejected under § 2(a)’s bar on immoral or scandalous marks … are lewd, crass, or even disturbing.” The Court continued that it “was not eager to see a proliferation of such marks in the marketplace.” But, “There are countless songs with vulgar lyrics, blasphemous images, scandalous books and paintings, all of which are protected under federal [copyright] law.” And, “The First Amendment… protects private expression, even private expression which is offensive to a substantial composite of the general public.”

Obscene Material

The court left open the possibility that a provision barring marks comprising obscene material could be constitutionally permissible.

The government might appeal this ruling to the Supreme Court and argue that the immoral and scandalous provision should be interpreted narrowly to cover only marks comprising obscene material. It seems unlikely that the court will take that appeal following Tam.

Your trademark is registered in the United States. But you sell goods/services under that trademark both in the US and in foreign countries. Should you use the registered trademark symbol, R enclosed in a circle, i.e. ®, next to the mark on or in connection with the goods/services sold in foreign countries?

Maybe not, unless you registered the mark in the foreign countries where it is used and those foreign countries allow for the use of R in a circle.

When a trademark is registered in the US and the mark is used in the US on or in connection with goods/services described in the registration, US law provides that the owner of the registration can and should indicate that the mark is registered. See 15 U.S.C. 1111. That indication is often provided by placing the letter R enclosed in a circle next to the mark, i.e. ®. An alternative to using the circle R, the owner can provide a text statement that the mark is a Registered in U.S. Patent and Trademark Office,” which can be abbreviated “Reg. U.S. Pat. & Tm. Off.”

But, trademark rights are generally confined to the countries or jurisdictions where the marks are used or registered. Therefore, a registration in the US generally does not provide the registration owner with trademark rights outside of the US.

If you use the R in a circle next to your mark on goods/services sold in a foreign country, could consumers there think that your mark is registered in that foreign country or jurisdiction? Possibly, yes. A 2000 report from the International Trademark Association details that many foreign countries prohibit the indication that a mark is registered when it is, in fact, not registered in that country. The report provides that such use can result in sanctions, civil liability, and even criminal penalties.

Therefore, you should be careful when using R in a circle in a foreign country to be sure your use comports with the local law in that country.

When considering whether two trademarks are similar for conflict purposes, the marks are considered in their entireties, including their appearance, sound, and commercial impression. Sometimes one of those attributes stands out to distinguish the marks even when similarities exist in the other attributes.

Manuel Tellez applied to register the mark SLAY OR PREY for apparel. The USPTO Examining Attorney refused registration based on a likelihood of confusion with Registration no. 5,066,234 for the mark PRAY THEN SLAY (and design) for t-shirts.

On appeal, the Board reversed the Examining Attorney’s refusal to register, finding the two marks had sharply different meanings.

The Board acknowledged that the appearance and sound of the marks were somewhat similar because (1) the marks shared the term “slay” and (2) “pray” and “prey” of the marks were phonetically equivalent and visually similar. Yet, the Board said that consumers would read and recognize “prey” and “pray” as sharply distinct words.

After reviewing dictionary definitions, the Board stated:

“…Applicant’s mark most likely gives the impression of presenting a choice to either kill or become a victim by falling prey to a predator. By contrast, we find that the registered mark most likely conveys a command to first confer with the divine through prayer, and next to impress others (the slang meaning of “slay” [which is “to impress strongly; overwhelm, especially by humor: Your jokes slay me.”]). The mark may suggest that prayer will lead to making a strong impression on others — i.e. if you pray, then you will slay. Alternatively, Registrant’s mark could be viewed as a call to faith-inspired violence — i.e. to pray and then slay, in the traditional sense of the word.”

Let’s hope that the registrant was intending the slang meaning of slay.

The sharply different meanings of the marks were enough for the Board to conclude there was no likelihood of confusion between the marks.

Case citation: In re Manuel E. Tellez, No. 87229195 (TTAB 2017).

Ann Peterson applied to register the word-and-design mark REAL ORANGE for Christian ministry services in class 45.

The reThink Group, Inc opposed the registration based on its prior registration for the word-and-design mark of ORANGE for electronic downloadable publications and prerecorded media, print material, and educational services related to church ministry, among other services in class 9, 16, and 41. 

One factor in determining whether there is a conflict between two marks is whether the goods/services provided under the respective marks are similar.

Peterson argued her services were different from the goods and services of reThink’s mark because they were in different International Classes: class 45 in Peterson’s case and Classes 9, 16, and 41 in reThink’s case. Each trademark applicant must (1) provide a description of goods and/or services, which are provided under the mark and (2) designate the international class(es) which the goods/services fall into.

But the Board rejected Peterson’s argument. The Board noted that 15 USC 1112 provides “The Director may establish a classification of goods and services, for the convenience of the Patent and Trademark Office administration, but not to limit or extend the applicant’s or registrant’s rights.” The Board also noted that the Federal Circuit has stated that “classification is wholly irrelevant to the issue of registrability under section 1052(d), which makes no reference to classification.

Therefore, you cannot avoid a conflict with another registered mark solely on the argument that the goods/services of the registered mark are registered in different international trademark class(es) from the goods/services of your mark.

Case citation: The reThink Group, Inc. v. Ann Peterson, Op. No. 91227798 (TTAB 2017).

P.T. Arista Latindo (“Arista”) sought to register the trademark SENSI for diapers, among other things. The USPTO refused the registration in connection with diapers on the basis of two prior registrations for the mark SENSI-CARE (Tm Reg. Nos. 2618533, 3640455) for skin care products for treating and preventing diaper rash.

Arista argued that there was no likelihood of confusion between its mark and the SENSI-CARE marks because Arista uses a tagline “Sensible way of living” on its website. It argued that customers would assume its SENI mark means “sensible,” considering its tagline, whereas consumers would see SENI in the prior SENI-CARE marks as referring to “sensitive.”

The problem is that Airsta’s tagline was not in its trademark application. On appeal, the court said that the USPTO “must only compare the mark in the prior registration with the mark in the [present] application.” In re P.T. Arista Latindo, No. 2017-1292 (Fed. Cir. 2017). The court also said  “trade dress may not be used to prove that the commercial impressions are different, since trade dress may be changed at any time.”

The content of a trademark application is what is considered by the USPTO when deciding whether to register the mark. This is one reason it is important to do a trademark search prior to filing an application. A trademark search may help inform whether you should include a tagline, other words or characters, or graphical elements in your applied-for mark to increase the chance of distinguishing an already registered mark. Taglines, words, characters, or other elements that are not included in your application when it is filed probably will be of no help in distinguishing prior marks, as was the case for Arista.