Last Friday, the Supreme Court decided it will hear the Brunetti case, and take a closer look at Section 2(a) of the Lanham Act, the portion forbidding federal registration of trademarks having matter that is scandalous or immoral.

So, it appears my big prediction for 2019 is pointing in the affirmative direction:

“In terms of my big trademark prediction for 2019, it will be revealed whether the scandalous bar to federal registration is invalidated, whether or not the Supreme Court agrees to hear Brunetti.”

Now that the Court has decided to review Brunetti, it will be the one to decide whether the “scandalous” and “immoral” bars to registration violate the First Amendment, not the Court of Appeals for the Federal Circuit.

So, perhaps Chief Justice John Roberts was foreshadowing a review of Brunetti, when he was speaking in Minneapolis, and said: “Obviously, if any court finds an Act of Congress unconstitutional, we will take it . . . .

To piggyback on what I wrote back in October:

“There are plenty of good reasons for the Court to decide the constitutionality of the “scandalous” and “immoral” language, separate and apart from the disparagement language found to violate the First Amendment in Tam (here, here, here, here, here, and here).”

“If the Court does hear Brunetti, let’s hope Section 7 of the Lanham Act — the provision expressly noting that federal registrations are issued ‘in the name of the United States of America‘ — won’t be some uninteresting and ignored ‘nuance’ of trademark law to the justices.”

You may recall, I previously said this about the Federal Circuit’s overreach in Brunetti:

“What is striking about the CAFC ruling is its breadth. It isn’t guided by the Supreme Court’s Tam decision — requiring viewpoint discrimination — as the Tam Court found with disparagement.”

“The CAFC did not decide whether the ‘scandalous and immoral’ clause constitutes impermissible viewpoint discrimination, instead it seized on mere content as lower hanging fruit for invalidation.”

“The problem with focusing on content alone is that it proves too much. Trademarks, by definition, are made up of content, and many other provisions of federal law limit the right to register based on content, so, if this analysis holds, what additional previously-thought-well-settled provisions of federal trademark law will fall? Importantly, some even allow for injunctive relief: tarnishment.”

I’m thinking the Court will decide that the Federal Circuit went too far in Brunetti, and it will find a way to retain the “scandalous” bar to federal registration, though I’m doubting the “immoral” bar will survive, so stay tuned.

What are your predictions dear readers?

It’s not every day you’re presented with the unique opportunity of seeing and hearing the Chief Justice of the United States Supreme Court live in your own backyard, thanks very much Caleb!

Tuesday was that day, Chief Justice John G. Roberts, Jr. was here in Minneapolis for the 2018 Stein Lecture at the University of Minnesota’s Northrup Auditorium, as the Star Tribune reported.

SCOTUSBlog had this to say about the Chief Justice’s remarks. To listen to a recording of the event, to a sell out crowd of 2,700, check out MPR’s coverage, here.

Others reporting on this event don’t appear to care about trademarks as much as we do, so this may be the only place you’ll learn about Justice Roberts’ remarks relating to trademarks.

As you can imagine, knowing the vast body of legal subject matter confronted by the Supreme Court, clearly my ears perked up in hearing Justice Roberts utter the word “trademark” five times!

Moderator Robert Stein, former University of Minnesota Law School Dean, asked Chief Justice Roberts whether any highly technical subject matter might be unsuited for the Court to decide.

My mind went to the creation of the CAFC in 1982, specifically designed to hear all federal district court patent appeals, yet the Supreme Court has repeatedly reversed the CAFC since 2005.

Justice Roberts never mentioned the CAFC, instead he waxed a bit about trademark expertise:

“My answer, I think is, no, because usually no matter how complex and involved the legal issue, the case may seem, it implicates a broader legal question about, you know, the statute may be complicated, but the question is going to be, well, how do you go about reading the statute, what sources do you look at in a particular case. We don’t take technical legal cases because we like technical legal cases. They’re usually because they implicate a broader question. When I was practicing law, this is a speech I gave a lot of times, because I was not an expert in any area of the law. I like to think of myself as somebody who was good arguing in a particular court, in the Supreme Court, and so I’d have to, you know, convince someone who comes in with an important trademark case, who could hire the world’s leading expert in trademark law, or me.  And, I would tell them, look, the Supreme Court does not think your case is a big deal for trademark law. It thinks your case is a big deal for how regulations relate to the statute, how particular provisions in the statute should be read. So, you need somebody who, you know, can look at it in that broader perspective that the justices do, and you know, I would say, half of the time, they would say, well, I actually want somebody who knows something about trademark law, and that was understandable, but, then it would be, and, you know, they would get there in front of the Court, and they’re too expert in trademark law, and the justices just aren’t that interested in a lot of those nuances, and sometimes they would just be speaking over each other.”

My ears also perked up with Justice Roberts’ remarks about the Court’s fewer decisions:

“We have particular criteria for the cases we want to take. Obviously, if any court finds an Act of Congress unconstitutional, we will take it, we think as a matter of comity to the branches across the street, we should be the ones to say that, if any court is . . . .”

Do you see where I’m going with that remark, dear readers? I’m thinking about Erik Brunetti.

As you will recall, presently before the Supreme Court, is whether to hear the Brunetti case, and the issue presented in Brunetti is:

“Whether Section 2(a) of the Lanham Act’s prohibition on the federal registration of ‘immoral’ or ‘scandalous’ marks is facially invalid under the free speech clause of the First Amendment.”

Given the clarity of Justice Roberts’ statement, “if any court finds an Act of Congress unconstitutional, we will take it,” I’ll be amending my prediction otherwise, since the CAFC did just that, in Brunetti.

There are plenty of good reasons for the Court to decide the constitutionality of the “scandalous” and “immoral” language, separate and apart from the disparagement language found to violate the First Amendment in Tam (here, here, here, here, here, and here).

If the Court does hear Brunetti, let’s hope Section 7 of the Lanham Act — the provision expressly noting that federal registrations are issued “in the name of the United States of America” — won’t be some uninteresting and ignored “nuance” of trademark law to the justices.

Erik Brunetti is not one step closer to being able to federally-register his vulgar and scandalous FUCT trademark for clothing; his portfolio of applications remain log jammed (here and here):

So, scandalous trademark applications are still on hold at the U.S. Trademark Office, since the government is now asking for the Supreme Court to reverse Brunetti. First prediction, check.

As you will recall, the Court of Appeals for the Federal Circuit in Brunetti, struck down the scandalous and immoral bar on federal trademark registration, as a violation of Free Speech.

The government now contends that denying federal registration of scandalous or immoral matter does not constitute viewpoint discrimination, so Brunetti isn’t controlled by the Tam decision.

The scandalous and immoral registration bar has been applied since the 1905 Trademark Act, and “scandalous” is interpreted to mean, under current attitudesshocking to the sense of propriety.

Putting aside whether much of anything in our current culture can be considered shocking, if it’s possible, doesn’t shocking content express a certain viewpoint, namely one with shock value?

And, if Justice Alito was right in Tam that the disparagement bar is a “happy talk clause,” then isn’t the scandalous bar a “tranquility clause,” appropriately and fully cleansing of any shock value?

Will the Supreme Court decide to review the Brunetti decision? I’ve predicted it won’t, but it should, so I’m hoping to be wrong, it would be priceless to see the Court address Section 7:

“Why did the Tam Court not acknowledge that a Certificate of Registration is issued by the USPTO, under authority of the Department of Commerce, “in the name of the United States of America,” under Section 7 of the Lanham Act, and instead proceed to mock the governmental speech argument without addressing or attempting to explain away this difficult fact?”

That drum we have been beating hard, so kudos to the government in pressing Section 7:

“Congress’s directve that the USPTO refuse federal trademark registration to vulgar words and lewd sexual images is consistent with those First Amendment principles. Congress legitimately determined that a federal agency should not use government funds to issue certificates ‘in the name of the United States of America’ conferring statutory benefits for use of vulgar words and lewd sexual images. 15 U.S.C. 1057(a). Although [Erik Brunetti] has a First Amendment right to use a vulgar word as a mark for his clothing line, he has no comparable right to require the government to register vulgar terms, issue registration certificates for them in the name of the United States, inscribe them on the USPTO’s Principal Register, and bestow valuable benefits on the markholders’ use of the terms in commerce.”

Even if it ends again, with the Free Speech argument prevailing, for reasons beyond my beliefs (here, here, and here), nevertheless it would be helpful for predicting the fate of other portions of the Lanham Act that are content-based and that have been called into question. Wait and see:

Trademarks consisting of or comprising “scandalous or immoral” matter still won’t be granted federal registration “in the name of the United States of America,” at least for the time being.

Immediately on the heels of the International Trademark Association’s 140th Annual Meeting in Seattle, and our well-received panel discussion concerning Trademarks and Free Speech, the United States Patent and Trademark Office announced it will continue to hold on to and suspend trademark applications containing scandalous or immoral matter, until further notice.

The Trademark Office is waiting to see whether the federal government will appeal the Brunetti decision to the U.S. Supreme Court. What I would give to be a fly on the wall in those discussions.

As you may recall, a three-member panel of the Court of Appeals for the Federal Circuit (CAFC), ruled last December that the “scandalous or immoral” statutory bar to registration violates a trademark applicant’s Free Speech, overturning a part of trademark law in existence since 1905.

Since the federal government’s request that the entire CAFC reconsider the three-member panel decision Brunetti was denied in April, the government now has until July 11 to seek Supreme Court review or ask for more time to decide, stay tuned. Learned John Welch predicts no appeal.

During our INTA panel discussion, I predicted the government will seek review of Brunetti by the U.S. Supreme Court. I also predicted the Supreme Court will pass on the request, stay tuned.

Even if it might be tempting to believe that — in our present culture — anything goes and nothing can rise to the level of scandalousness any longer, so why bother trying to salvage a statutory relic from more than 100 years ago, I’m thinking the federal government won’t throw in the towel yet.

As we’ve written before, the Brunetti decision, didn’t anchor itself to the viewpoint discriminatory requirement from the Supreme Court in Tam, instead focusing on mere content discrimination to justify invalidation of a more than a century old part of federal trademark law.

This much easier test for invalidation puts at risk many other portions of federal trademark law, so I’m thinking the federal government can’t let the mere content discriminatory requirement of Brunetti stand without at least trying for Supreme Court review for further direction and guidance.

It’s also hard to believe the federal government is truly ready to have the USPTO knowingly begin to federally register obscene, profane, and sexually explicit matter as trademarks, “in the name of the United States of America,” for the first time in history. What’s your prediction?

UPDATE: Susan Decker of Bloomberg interviewed and shares quotes yours truly on the subject, here.

Yesterday in Seattle — where nearly 11,000, sleepless, brand protection, trademark, and IP professionals from 150 countries have registered and converged for INTA’s 140th Annual Meeting — yours truly had the distinct pleasure of sharing some thoughts on the intersection between federal trademark registration and Free Speech. Here are some before, during and after pics:

Before:

 

During:

 

 

After:

Steve Baird, Amanda Blackhorse, Joel MacMull, Simon Tam
Professor Lisa Ramsey, Steve Baird, and Professor Christine Haight Farley whispering in Steve’s ear

Highlights:

Amanda Blackhorse:

Message to Daniel Snyder: “You cannot force honor on someone.”

Steve Baird:

“Federal trademark registration is a giant exception to Free Speech.”

Other messages drawn from here, here, here, here, and here.

Simon Tam:

Interpreting USPTO: “They said we were too Asian!”

Joel MacMull:

The Tam case never should have been decided on Constitutional grounds!

Great questions from the engaged crowd, wish there had been much more time!

What were your highlights from the panel discussion?

UPDATE: Simon Tam, writing about Paper Justice, here.

Last Friday was a big day for Erik Brunetti. He won his appeal at the CAFC, opening the door to federal trademark registration of his four-letter-word “fuct” clothing and fashion brand name.

The same door swung wide open for all other vulgar, scandalous, and immoral designations used as trademarks, because the 112-year old registration prohibition was found to violate free speech.

You may recall where I take a knee on the free speech argument as it relates to the government’s issuance of federal trademark registrations, see here, here, here, here, here, here, and here.

I’m continuing to believe Congress has the power under the Commerce Clause to distance itself from and not be viewed as endorsing certain subject matter on public policy grounds, especially when Certificates of Registration are issued “in the name of the United States of America.”

Having said that, I’m thinking the federal government has done a less than stellar job of articulating and advocating for this right, which may very well explain the current state of affairs.

What is striking about the CAFC ruling is its breadth. It isn’t guided by the Supreme Court’s Tam decision — requiring viewpoint discrimination — as the Tam Court found with disparagement.

The CAFC did not decide whether the “scandalous and immoral” clause constitutes impermissible viewpoint discrimination, instead it seized on mere content as lower hanging fruit for invalidation.

The problem with focusing on content alone is that it proves too much. Trademarks, by definition, are made up of content, and many other provisions of federal law limit the right to register based on content, so, if this analysis holds, what additional previously-thought-well-settled provisions of federal trademark law will fall? Importantly, some even allow for injunctive relief: tarnishment.

Asked before, but will dilution by tarnishment survive this kind of strict free speech scrutiny? According to the CAFC in Brunetti, strict scrutiny applies even without viewpoint discrimination.

All that leads me to explore with you Brunetti’s line of “fuct” clothing, and in particular, this t-shirt which is surprisingly for sale online, here.

We’ll see for how long it’s available online, or whether Mr. Brunetti will need to Go Further, to get another brand’s attention, hello, Ford:

It’s hard to imagine the famous Ford logo, consisting of the distinctive script and blue oval, not being considered sufficiently famous and worthy of protection against dilution — without a showing of likelihood of confusion. But, given Tam and Brunetti, is a dilution by tarnishment claim even viable, or is it just another federal trademark provision about to fall, in favor of free speech.

Just because Mr. Brunetti may be anointed with a federal registration for the word “fuct” doesn’t mean his depiction of the word in the above style and design is lawful for use or registration.

So, if Ford does pursue the Brunetti t-shirt, under a dilution by tarnishment theory, and if it were considered to be a viable claim, in the end, might Mr. Brunetti be the one, let’s say, uniquely suited — to vanquish tarnishment protection from the Lanham Act?

Or, will another potty-mouth brand be the one to seriously probe the constitutionality of dilution protection against tarnishment?

Last but not least, and sadly for me, last Friday also was a big day for Mr. Daniel Snyder too.

Lee Corso (former coach and ESPN football analyst) frequently utters this famous sports media catchphrase on ESPN’s “College GameDay” program: “Not so fast, my friend!

The first three words of that phrase come to mind upon hearing that THRILLED Daniel Snyder (majority owner of the NFL football franchise nearest the Nation’s Capitol) is celebrating Simon Tam’s (and Tam’s talented lawyers’) recent victory at the Supreme Court.

Excluded are the last two words as inapplicable, as I’ve never met Mr. Snyder, so I can’t say he’s my friend, and if even a small fraction of what Rolling Stone says about him is true, friendship seems unlikely, unless of course, he engages the services of an expert to rebrand the franchise (without the racial slur), something I asked for eight years ago.

Yet, “not so fast,” as a week ago, the government filed a brief with the Court of Appeals for the Federal Circuit, asking the Federal Circuit to affirm the TTAB’s refusal to register FUCT based on the scandalous portion of Section 2(a) of the Lanham Act, despite Tam.

The Department of Justice further contends that the Supreme Court’s ruling in Tam does not implicate the First Amendment in terms of scandalous matter, because unlike the stricken disparagement portion of 2(a), the remaining scandalous portion is viewpoint neutral.

To the extent the Justice Department prevails and the current bar on registration of “scandalous” matter survives First Amendment scrutiny with the Federal Circuit’s review in the Brunetti case, this could impact Daniel Snyder’s currently suspended R-Word trademark applications (here, here, and here), and the NFL’s suspended Boston Redskins application.

While the decades-old R-Word registrations challenged in Harjo and Blackhorse appear safe from cancellation given the ruling in Tam, what stops others from opposing registration of any future R-Word applications (or any of the currently suspended applications, if published) as containing scandalous matter in violation of Section 2(a) of the Lanham Act?

If the scandalous bar to registration survives First Amendment scrutiny, opposers (unlike cancellation petitioners) would have the significant benefit of only needing to show (at the time of an opposition decision) that the current R-Word applications have scandalous matter.

It’s a question of the timing of proof necessary, in other words, no time machine would be required to determine how the relevant public perceived the R-Word marks back in the late 1960s when the first R-Word registration issued for the team; those would not be at issue.

It’s also a question of who comprises the relevant public. For disparaging matter, it was Native Americans. For scandalous matter, it would be the general public, although not necessarily a majority, but instead a “substantial composite of the general public.”

The Act’s present prohibition on the registration of scandalous matter reaches matter that is “shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation.” Wouldn’t unambiguous racial slurs qualify for this treatment?

Who’s ready to carry the next, but new flame, if needed, to oppose registration of any R-Word applications that publish for opposition, contending that a substantial composite of the general public finds the applied-for marks “shocking” to their sense of propriety and/or “offensive” to their conscience?

Even those who fought hard to undue the disparagement provision of Section 2(a) for Simon Tam, see Daniel Snyder’s team name in a very different light, and let’s also say, not a very sympathetic light. And, the general public today is not the public from 50 years ago.

Finally, given the vast public attention and support this issue has received over the last quarter century, it would be more than interesting to see what kind of a record could be developed on the scandalous ground for registration refusal, today, and not decades ago.

So, not so fast, let’s see what happens to the scandalous portion of Section 2(a) in Brunetti, before allowing Daniel Snyder to celebrate Tam too strongly, my friends.

UPDATE: The NFL’s Boston Redskins trademark application has been removed from suspension, reports Erik Pelton, so, who will oppose if published, and why hasn’t the USPTO issued a new refusal on scandalous grounds yet?