Amicus Curiae Brief — Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark Office, Petitioner v. Erik Brunetti

Supreme Court briefMar 25, 2019

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No. 18-302

In the

Supreme Court of the United States

ANDREI IANCU, UNDER SECRETARY OF

COMMERCE FOR INTELLECTUAL PROPERTY AND

DIRECTOR, PATENT AND TRADEMARK OFFICE,

Petitioner,

ERIK BRUNETTI,

Respondent.

On Writ of Certiorari to the United States

Court of A ppeals for the Federal Circuit

AMICUS CURIAE BRIEF OF THE

INTERNATIONAL TRADEMARK ASSOCIATION

IN SUPPORT OF RESPONDENT

David Donahue

Fross Zelnick Lehrman

& Zissu, P.C.

4 Times Square, 17th Floor

New York, New York 10036

(212) 813-5900

David H. Bernstein

Counsel of Record

Jeremy Feigelson

Pooja A. Boisture

Michael C. McGregor

Jaime M. Freilich

Debevoise & Plimpton LLP

919 Third Avenue

New York, New York 10022

(212) 909-6696

dhbernstein@debevoise.com

Claudia Ray

Kirkland & Ellis LLP

601 Lexington Avenue

New York, New York 10022

(212) 446-4800

Attorneys for Amicus Curiae

The International Trademark Association

287422

TABLE OF CONTENTS

Page

TABLE OF CONTENTS. . . . . . . . . . . . . . . . . . . . . . . . . . i

TABLE OF CITED AUTHORITIES . . . . . . . . . . . . . . . iv

INTERESTS OF THE AMICUS CURIAE . . . . . . . . . 1

SUMMARY OF ARGUMENT . . . . . . . . . . . . . . . . . . . . 3

ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7

I. Section 2(a) Cannot Survive Intermediate

Scrutiny, W hich Is The Appropriate

Standard Of Review . . . . . . . . . . . . . . . . . . . . . . . . 7

A. I nt e r me d i at e S c r ut i ny I s T he

Appropriate Standard Of Review . . . . . . . . 8

1. Trademarks A re Commercial

Speech, Restrictions On Which

A re Subject To Intermediate

Scrutiny . . . . . . . . . . . . . . . . . . . . . . . . . . 8

2. Strict Scrutiny Is Not Warranted

Here . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12

B. S e c t i o n 2 (a) C a n n o t S u r v i v e

Intermediate Scrutiny . . . . . . . . . . . . . . . . . 15

1. The Government Does Not Have A

Substantial Interest In Prohibiting

The Registration Of “Immoral” Or

“Scandalous” Trademarks . . . . . . . . . . 16

Table of Contents

Page

a. The Gover nment Has No

S u b s t a nt i a l I nt e r e s t I n

P rot ec t i ng P ubl ic O rder

And Morality Through The

T r a dem a rk R eg i st r at ion

System . . . . . . . . . . . . . . . . . . . . . . . 16

b. Protecting The Orderly Flow Of

Commerce Is Not A Legitimate

Governmental Interest In

This Context . . . . . . . . . . . . . . . . . . 17

c. Restrictions On Trademark

Reg istrations Cannot Be

Overcome By Mischaracterizing

Trademarks As The Appearance

Of Government Speech . . . . . . . . . 18

2. Even If The Government Had A

Substantial Interest, The Immoral

Or Scandalous Provision Does Not

Advance That Interest . . . . . . . . . . . . . 20

3. The Immoral Or Scandalous

P r ov i s ion Is Not Na r r owly

Tailored To Achieve The Desired

Objective . . . . . . . . . . . . . . . . . . . . . . . . . 27

II. The Immoral or Scandalous Provision

Also is Void for Vagueness . . . . . . . . . . . . . . . . . 28

iii

Table of Contents

Page

III. The Trademark Registration System

Is Not A Government Subsidy That

Entitles The Government To Engage In

Viewpoint Discrimination . . . . . . . . . . . . . . . . . . 30

A. Trademark Registration Does Not

Implicate Congress’s Powers To Spend

Or Control Government Property. . . . . . . 30

B. Under The Government’s Position, Any

Government Registration Program,

Including That For Copy r ights,

Would Prov ide The Government

With Censorship Rights . . . . . . . . . . . . . . . 32

CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 35

TABLE OF CITED AUTHORITIES

Page

CASES

Agency for Int’l Development v.

Alliance for Open Society Int’l, Inc.,

570 U.S. 205 (2013) . . . . . . . . . . . . . . . . . . . . . . . . 31, 34

Application of Nat’l Distillers

& Chem. Corp.,

297 F.2d 941 (C.C.P.A. 1962) . . . . . . . . . . . . . . . . . . . 21

Arkansas Writers’ Project, Inc. v. Ragland,

481 U.S. 221 (1987). . . . . . . . . . . . . . . . . . . . . . . . . . . 15

Ashcroft v. Free Speech Coalition,

535 U.S. 234 (2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . 28

Autor v. Pritzker,

740 F.3d 176 (D.C. Cir. 2014) . . . . . . . . . . . . . . . . . . . 31

Bd. of Trs. of State Univ. of N.Y. v. Fox,

492 U.S. 469 (1989) . . . . . . . . . . . . . . . . . . . . . . . . . . . 11

Belcher v. Tarbox,

486 F.2d 1087 (9th Cir. 1973). . . . . . . . . . . . . . . . . . . 20

Bolger v. Youngs Drug Prods. Corp.,

463 U.S. 60 (1983). . . . . . . . . . . . . . . . . . . . . . . . . . . . 11

Cited Authorities

Page

Cent. Hudson Gas & Elec. Corp. v.

Pub. Serv. Comm’n of New York,

447 U.S. 557 (1980) . . . . . . . . . . . . . . . . . . . . . . . passim

Davenport v. Washington Educ. Ass’n,

551 U.S. 177 (2007) . . . . . . . . . . . . . . . . . . . . . . . . 13, 33

Dombrowski v. Pfister,

380 U.S. 479 (1965). . . . . . . . . . . . . . . . . . . . . . . . . . . 26

Edenfield v. Fane,

507 U.S. 761 (1993) . . . . . . . . . . . . . . . . . . . . . . . . . . . 20

F.C.C. v. Fox Television Stations, Inc.,

567 U.S. 239 (2012). . . . . . . . . . . . . . . . . . . . . . . . . . . 29

Friedman v. Rogers,

440 U.S. 1 (1979) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9-10

Greater New Orleans Broad. Ass’n, Inc. v.

United States,

527 U.S. 173 (1999) . . . . . . . . . . . . . . . . . . . . . . . . 21, 27

Henson v. Santander Consumer USA Inc.,

137 S. Ct. 1718 (2017) . . . . . . . . . . . . . . . . . . . . . . . . . 22

In re Bacardi & Co.,

48 U.S.P.Q.2d 1031 (T.T.A.B. 1998) . . . . . . . . . . . . . . 12

In re Boulevard Entm’t, Inc.,

334 F.3d 1336 (Fed. Cir. 2003) . . . . . . . . . . . . . . . 23-24

Cited Authorities

Page

In re Brunetti,

877 F.3d 1330 (Fed. Cir. 2017) . . . . . . . . . . . . . . passim

In re Budge Mfg. Co.,

857 F.2d 773 (Fed. Cir. 1988) . . . . . . . . . . . . . . . . . . . 12

In re Fox,

702 F.3d 633 (Fed. Cir. 2012) . . . . . . . . . . . . . . . . 23, 24

In re In Over Our Heads, Inc.,

16 U.S.P.Q.2d 1653 (T.T.A.B. 1990) . . . . . . . . . . . . . . 24

In re Mavety Media Group Ltd.,

33 F.3d 1367 (Fed. Cir. 1994) . . . . . . . . . . . . . . . . . . . 23

In re Tam,

808 F.3d 1321 (Fed. Cir. 2015) . . . . . . . . . . . . . . . . . . 34

Matal v. Tam,

137 S. Ct. 1744 (2017) . . . . . . . . . . . . . . . . . . . . . passim

McIntyre v. Ohio Elections Comm’n,

514 U.S. 334 (1995) . . . . . . . . . . . . . . . . . . . . . . . . . . . 14

Miller v. California,

413 U.S. 15 (1973) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22

Mitchell Bros. Film Group v. Cinema

Adult Theater,

604 F.2d 852 (5th Cir. 1979). . . . . . . . . . . . . . . . . . . . 20

vii

Cited Authorities

Page

Nat’l Endowment for Arts v. Finley,

524 U.S. 569 (1998). . . . . . . . . . . . . . . . . . . . . . . . . . . 31

Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc.,

469 U.S. 189 (1985). . . . . . . . . . . . . . . . . . . . . . . . . 8, 11

Reno v. American Civil Liberties Union,

521 U.S. 844 (1997). . . . . . . . . . . . . . . . . . . . . . . . . . . 29

Rust v. Sullivan,

500 U.S. 173 (1991) . . . . . . . . . . . . . . . . . . . . . . . . . . . 31

S.F. Arts & Athletics, Inc. v. U.S. Olympic

Committee,

483 U.S. 522 (1987). . . . . . . . . . . . . . . . . . . . . . . . 10, 11

Sorrell v. IMS Health Inc.,

564 U.S. 552 (2011) . . . . . . . . . . . . . . . . . . . . . . 13-14, 15

Street v. New York,

394 U.S. 576 (1969) . . . . . . . . . . . . . . . . . . . . . . . . . . . 17

Texas v. Johnson,

491 U.S. 397 (1989) . . . . . . . . . . . . . . . . . . . . . . 14-15, 17

Tinker v. Des Moines Indep. Cmty. Sch. Dist.,

393 U.S. 503 (1969). . . . . . . . . . . . . . . . . . . . . . . . . . . 17

Turner Broad. Sys., Inc. v. F.C.C.,

512 U.S. 622 (1994) . . . . . . . . . . . . . . . . . . . . . . . . 13, 28

viii

Cited Authorities

Page

United Drug Co. v. Theodore Rectanus Co.,

248 U.S. 90 (1918) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19

United States v. Am. Library Ass’n, Inc.,

539 U.S. 194 (2003). . . . . . . . . . . . . . . . . . . . . . . . . . . 31

United States v. Williams,

553 U.S. 285 (2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . 29

Vonage Holdings Corp. v. F.C.C.,

489 F.3d 1232 (D.C. Cir. 2007) . . . . . . . . . . . . . . . . . . 23

Wal-Mart Stores, Inc. v. Samara Bros.,

529 U.S. 205 (2000). . . . . . . . . . . . . . . . . . . . . . . . . . . 18

Ysursa v. Pocatello Ed. Ass’n,

555 U.S. 353 (2009). . . . . . . . . . . . . . . . . . . . . . . . . . . 33

STATUTES

15 U.S.C. § 1051 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19

15 U.S.C. § 1052(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3, 27

15 U.S.C. § 1052(d). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27

15 U.S.C. § 1052(e) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11

15 U.S.C. § 1052(e)(1). . . . . . . . . . . . . . . . . . . . . . . . . . . . 27

Cited Authorities

Page

15 U.S.C. § 1052(e)(2). . . . . . . . . . . . . . . . . . . . . . . . . . . . 27

15 U.S.C. § 1052(f) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11

15 U.S.C. § 1058 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19

15 U.S.C. § 1125(a)(1). . . . . . . . . . . . . . . . . . . . . . . . . . . . 13

15 U.S.C. § 1127 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8

35 U.S.C. § 42(c)(1). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 32

OTHER AUTHORITIES

B. Iverson, Matal v. Tam: What’s New and What

to Watch in Registration of Disparaging,

Immoral, and Scandalous T rademarks,

IPWatchDog.com (Sept. 28, 2018), http://

w w w.ipwatchdog.com/2018/09/28/matal-vtam-turns-disparaging-immoral-scandaloustrademarks/id=101469/ . . . . . . . . . . . . . . . . . . . . . . . . 18

Carpenter & Garner, NSFW: An Empirical

Study of Scandalous Tra demarks,

33 Cardozo Arts & Ent. L. J. 321 (2015) . . . . . . 29, 30

Gilson LaLonde & Gilson, Trademarks Laid

Bare: Marks That May Be Scandalous or

Immoral, 101 Trademark Rep. 1476 (2011) . . . . . . . 23

Cited Authorities

Page

Immoral, Black’s Law Dictionary (10th ed. 2014). . . . 22

J. Thomas McCarthy, mcCarthy on TraDemarks

anD unFaIr ComPetItIon (5th ed. 2019 ) . . . . . . . . 9, 10

Scan d alo us Subject Matter, Black ’s Law

Dictionary (10th ed. 2014) . . . . . . . . . . . . . . . . . . . . . 22

Trademark Manual of Examining Procedure

§ 1203.01 (8th ed. Oct. 2018) . . . . . . . . . . . . . . . . . 23, 26

The undersigned amicus curiae respectfully submits

this brief in support of Respondent Erik Brunetti, and

urges affirmance of the decision below in In re Brunetti,

877 F.3d 1330 (Fed. Cir. 2017).1

INTERESTS OF THE AMICUS CURIAE

Amicus cur iae the International Trademark

Association (“INTA”) is a not-for-profit global organization

dedicated to the support and advancement of trademarks

and related intellectual property. Founded in 1878, INTA

has more than 7,200 member organizations from 191

countries. Its members include trademark and brand

owners, as well as law firms and other professionals who

regularly assist in the creation, registration, protection,

and enforcement of trademarks. All INTA members share

the goal of promoting an understanding of the essential

role that trademarks play in fostering effective commerce,

fair competition, and informed decision-making by

consumers.

INTA (for merly know n as the United States

Trademark Association) was founded in part to encourage

the enactment of federal trademark legislation following

invalidation on constitutional grounds of the United

States’ first trademark act. Since then, INTA has

1. Pursuant to Supreme Court Rule 37.6, this brief was

authored solely by INTA and its counsel, and no part of this brief

was authored by counsel for a party. No party or counsel for a

party, nor any other person or entity other than amicus curiae, its

members, and its counsel, made a monetary contribution intended

to fund the preparation or submission of this brief. Pursuant to

Supreme Court Rule 37.3(a), both Petitioner and Respondent have

provided written consent to INTA’s filing of this brief.

been instrumental in making recommendations and

providing assistance to legislators in connection with

major trademark and related legislation. INTA also has

participated as amicus curiae in numerous cases in this

Court and other courts across the country involving

significant Lanham Act issues. 2 Moreover, INTA’s

members are frequent participants in litigations, both

2. Cases in which INTA has filed amicus briefs include: Mission

Product Holdings, Inc. v. Tempnology, LLC, 139 S. Ct. 397 (petition

for certiorari granted Oct. 26, 2018); Fourth Estate Pub. Benefit

Corp. v. Wall-Street.com, LLC, 568 U.S. ___ (2019); Matal v. Tam,

137 S. Ct. 1744 (2017); Hana Fin., Inc. v. Hana Bank, 135 S. Ct. 907

(2015); B&B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293

(2015); Pom Wonderful LLC v. Coca-Cola Co., 573 U.S. 102 (2014);

Already, LLC v. Nike, Inc., 568 U.S. 85 (2013); KP Permanent

Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004);

Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23

(2003); Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003);

TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001);

Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000); Fla.

Prepaid Postsecondary Educ. Expense Bd. v. Coll. Sav. Bank, 527

U.S. 627 (1999); Dickinson v. Zurko, 527 U.S. 150 (1999); Qualitex Co.

v. Jacobson Prods. Co., 514 U.S. 159 (1995); Two Pesos, Inc. v. Taco

Cabana, Inc., 505 U.S. 763 (1992); K Mart Corp. v. Cartier, Inc., 486

U.S. 281 (1988); Shammas v. Focarino, 784 F.3d 219 (4th Cir. 2015);

Ferring B.V. v. Watson Labs., Inc.-Fla., 764 F.3d 1382 (3d Cir. 2014);

Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc.,

696 F.3d 206 (2d Cir. 2012); Rosetta Stone Ltd. v. Google, Inc., 676

F.3d 144 (4th Cir. 2012); Fleischer Studios, Inc. v. A.V.E.L.A., Inc.,

654 F.3d 958 (9th Cir. 2011); Levi Strauss & Co. v. Abercrombie &

Fitch Trading Co., 633 F.3d 1158 (9th Cir. 2011); Chloe v. Queen Bee

of Beverly Hills, LLC, 616 F.3d 158 (2d Cir. 2010); Starbucks Corp. v.

Wolfe’s Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009); ITC Ltd. v.

Punchgini, Inc., 482 F.3d 135 (2d Cir. 2007); Louis Vuitton Malletier

S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007); Test

Masters Educ. Servs., Inc. v. Singh, 428 F.3d 559 (5th Cir. 2005).

in courts and in administrative proceedings before the

United States Patent and Trademark Office (“PTO”)

and the Trademark Trial and Appeal Board (“TTAB”),

with respect to the Lanham Act. INTA and its members

have a deep and powerful interest in the development of

clear, consistent, and equitable principles of trademark

law, and in fair and consistent rules on the registration

of trademarks.

This case presents an issue of core concern to

INTA and its members: What trademarks are and are

not registrable under the Lanham Act. Brand owners

invest significant time, effort, and expense in developing

and clearing trademarks for federal registration. Such

registration adds important procedural protections and

remedies to the substantive trademark rights that are

conferred by common law. In deciding whether to invest

in developing and clearing a mark that will obtain federal

registration, trademark owners need clear guidance about

what the PTO will and will not allow. Trademark owners

also need the First Amendment freedom to choose a wide

range of marks, responding over time to evolving consumer

tastes without fear that their efforts will founder on the

unpredictable, archaic, and unconstitutional “immoral …

or scandalous” provision of Section 2(a) of the Lanham Act

(“immoral or scandalous provision”). 15 U.S.C. § 1052(a).

SUMMARY OF ARGUMENT

The immoral or scandalous provision in Section

2(a) of the Lanham Act regulates the registration of

trademarks. Trademarks—including marks that include

or consist of offensive terms, like the FUCT mark at issue

in this case—are commercial speech because their entire

purpose is to propose commercial transactions. They

tell consumers, “Come buy this branded car, or shirt,

or smartphone, or ride on this airline or visit this theme

park. This brand name, this logo, this slogan, all assure

you up front that you are getting goods and services from

a particular source that promises you things of a certain

nature and quality.”

Trademark law protects only the commercial aspects

of trademarks. It does not also protect any expressive

components. Appropriately, trademarks have been treated

as commercial speech long before the spotlight shone upon

them by this case. For these reasons, trademarks are

commercial speech, and intermediate scrutiny applies to

Section 2(a).

Strict scrutiny would apply only if the government

were fully restricting speech, which is not the case here.

Federal trademark registration offers many benefits,

including conferring prima facie evidence of the validity

of the registered mark and preventing the importation

into the United States of articles bearing a counterfeit

mark, among others. Trademarks still can exist in

the market and be protected under common law, even

if registration under the Lanham Act is denied. As a

result, the government action involved in this case is

not a full restriction. Intermediate scrutiny is thus the

appropriate standard of review. This is especially so

given that intermediate scrutiny leaves Congress and

individual trademark owners the ability to effectively

police infringement.

Under the intermediate scrutiny test that applies

to commercial speech, as articulated by the Court in

Central Hudson Gas & Electric Corp. v. Public Service

Commission of New York, 447 U.S. 557 (1980), the immoral

or scandalous provision is unconstitutional. This four-part

test asks whether (1) the speech concerns lawful activity

and is not misleading; (2) the asserted government interest

is substantial; (3) the regulation directly advances that

government interest; and (4) the regulation is not more

extensive than necessary. Although the government meets

the first prong, it fails the remaining three.

With respect to the second factor, the government’s

only stated interests relate to protecting the public from

immoral and scandalous speech, promoting the orderly flow

of commerce, and avoiding any appearance of government

approval through registration of such marks. The Court

already has ruled that the purported government interest

in protecting the public is inadequate, so the first interest

cannot be deemed substantial. Nor can the government’s

interest in promoting the orderly flow of commerce be

deemed a substantial interest, since trademarks serve

only to identify a brand through its source indicator. Just

because customers may find “immoral” or “scandalous”

marks to be shocking does not minimize the strength of

the marks as source indicators. Further, as the Court

recently held in Tam, 137 S. Ct. at 1760, trademarks are

not government speech. The government therefore has

no interest, substantial or otherwise, in dissociating itself

from the trademarks it registers.

With respect to the third factor, the government fails to

demonstrate that the provision is capable of advancing any

of its purported interests. The provision cannot protect

public sensibilities since the public is exposed to offensive

content in many other contexts besides trademarks. Nor

can the government interest of protecting the orderly

flow of commerce be advanced through the provision;

the provision does not and cannot prohibit the use of

scandalous or immoral trademarks in commerce because

the denial of registration does not prevent the use of the

marks at issue in commerce. Finally, even if trademark

registrations were deemed a form of government speech,

there is no support for the argument that the general

public would associate trademarks with the government.

Thus, the provision would not further the government’s

interest in disconnecting itself from trademarks of which

it does not approve.

Moreover, the immoral or scandalous provision of

Section 2(a) of the Lanham Act is so inherently vague, and

has been so inconsistently applied, that the government

cannot credibly argue that the provision directly advances

any interests it may have. The statutory language consists

only of the bare words “immoral” and “scandalous,”

leaving the PTO with little, if any, guidance and resulting

in wildly inconsistent PTO actions. As a result, nearly

identical marks containing the same provocative terms

have been approved in some cases and rejected in others.

With respect to the fourth factor, the government

has not demonstrated, and cannot demonstrate, that the

provision is narrowly tailored to further its interests.

Primarily, the provision is facially overbroad, reaching

some trademarks that are innocuous and only potentially

offensive. The very process by which PTO examiners

review trademark applications for “immoral … or

scandalous” language is extremely subjective, leaving

determinations about morality and scandalousness in

the hands of the individual examiners who have varying

beliefs about the subjects. Such erratic application of

this provision confirms that the provision has not been

carefully tailored.

Because the government fails three out of the four

prongs under the intermediate scrutiny analysis, the

immoral or scandalous provision is unconstitutional and

should be invalidated. For similar reasons, the provision

is also unconstitutional as void for vagueness.

The gover nment likew ise cannot justify this

unconstitutional statute by labeling it as part of the

spending power. This approach would allow the government

to impose conditions on the receipt of federal funds.

Trademark registration does not implicate Congress’s

powers to spend or control government funds or property

and therefore does not relate to the government’s spending

power.

ARGUMENT

Section 2(a) Cannot Survive Intermediate Scrutiny,

Which Is The Appropriate Standard Of Review

The threshold issue is what standard of review

applies to Section 2(a) for purposes of assessing its

constitutionality: Is the provision a complete limitation

on expressive speech, carrying independent political or

cultural viewpoints and significance, such that it should be

subject to strict scrutiny? Or is the provision a regulation

on commercial speech, i.e. “speech proposing a commercial

transaction,” Cent. Hudson, 447 U.S. at 562, that would

deny registration but still allow common law trademark

protection, thereby warranting the less rigorous standard

of intermediate scrutiny?

INTA believes strongly that trademarks are

commercial speech, on which Section 2(a) does not impose a

complete restriction. INTA thus urges the Court to clarify

that intermediate scrutiny is the correct framework, not

strict scrutiny as the Federal Circuit held. INTA further

urges the Court to confirm the result below—that is, to

hold that the “immoral … or scandalous” restriction of

Section 2(a) fails intermediate scrutiny.

Intermediate Scrutiny Is The Appropriate

Standard Of Review

Trademarks Are Commercial Speech,

Restrictions On Which Are Subject To

Intermediate Scrutiny

Trademarks are quintessential commercial speech. In

federal law, they are defined as commercial designations

used to “identify and distinguish” goods. 15 U.S.C. § 1127.

In the real world, trademarks do the same thing: They

are brand names, logos, slogans, and other designations

that quickly tell a consumer that a product or service

comes from Company A rather than Company B. Park

‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189,

191 n.1 (1985) (“The Lanham Act defines a trademark

to include ‘any word, name, symbol, or device or any

combination thereof adopted and used by a manufacturer

or merchant to identify his goods and distinguish them

from those manufactured or sold by others.’”) (citation

omitted). Consumers know that the Crest toothpaste

brand from Procter & Gamble can be counted on for oral

hygiene; that under McDonalds’ Golden Arches they will

always find a Big Mac hamburger with reliable taste and

quality; that the Nike swoosh is a reliable promise of

high-quality fitness gear and apparel; and that an Apple

computer product can be counted on for sleek design

and high performance. Any American consumer could

instantly provide many more such examples. Simply put,

trademarks are what enable consumers to “identify [the]

goods and services that they wish to purchase, as well as

those they want to avoid.” See Matal v. Tam, 137 S. Ct.

1744, 1751 (2017) (citations omitted).

The Lanham Act generally does not create substantive

trademark rights. Rather, the Lanham Act provides

a system of federal registration and enforcement for

trademark rights that arise at common law. See Tam, 137

S. Ct. at 1751-52 (“[w]ithout federal registration, a valid

trademark may still be used in commerce [and] may still be

enforceable”) (citation omitted). The advantages of federal

registration include, but are not limited to: (1) conferring

federal jurisdiction over infringement disputes without

any required amount in controversy; (2) the availability

of statutory damages for certain infringements in federal

court; (3) prima facie evidence of the validity of the

registered mark, of the registration of the mark, and

of the registrant’s exclusive right to use the mark; (4)

the opportunity for a mark to become “incontestable,”

and to provide conclusive evidence of the registrant’s

exclusive right to use the mark; (5) constructive notice

of a claim of ownership; (6) “constructive use date” as of

the filing date of the application; and (7) prevention of the

importation into the United States of articles bearing a

counterfeit mark. J. Thomas McCarthy, mcCarthy on

TraDemarks anD unFaIr ComPetItIon § 19:9 (5th ed. 2019)

(“McCarthy”). This Court should confirm the principle,

well-settled even before Tam, that trademarks inherently

are commercial speech. See Friedman v. Rogers, 440 U.S.

1, 11 (1979) (“the trade name is used as part of a proposal of

a commercial transaction” and the use of a trade name “is

a form of commercial speech and nothing more”) (citations

omitted); S.F. Arts & Athletics, Inc. v. U.S. Olympic

Comm., 483 U.S. 522, 535-36, (1987) (regulation of the use

of trademarks involves commercial speech, even if there

are expressive components to the speech). Indeed, “[t]he

power of the federal government to provide for trademark

registration comes only under its ‘Commerce Power.’” 1

mcCarthy § 5:3.

The correctness of intermediate scrutiny as the

appropriate standard is reinforced by the settled rule

that, even when a trademark includes content with some

expressive character, registration under the Lanham Act

protects only the mark’s source-identifying function. In

San Francisco Arts & Athletics, Inc. v. United States

Olympic Committee, the petitioner sought to incorporate

under the name “Golden Gate Olympic Association,” to

promote the “Gay Olympic Games,” which the lower courts

concluded infringed on the trademark rights of the U.S.

Olympic Committee (“USOC”). S.F. Arts, 483 U.S. at 525.

(Federal protection for those rights arose not under the

Lanham Act but under the analogous provisions of Section

110 of the Amateur Sports Act—for present purposes, a

distinction without a difference.) The petitioner argued

that the statute suppressed political speech because

“its use of the word ‘Olympic’ was intended to convey a

political statement about the status of homosexuals in

society.” Id. at 535. The Court disagreed; it ruled that any

expressive uses associated with “Gay Olympic Games” did

not transform the exercise of rights under the Amateur

Sports Act into regulation of expressive speech. See id.

at 536. Instead, “[b]y prohibiting the use of one word for

particular [trademark] purposes, neither Congress nor

the USOC has prohibited the [petitioner] from conveying

its message,” as evidenced by the fact that the petitioner

still held its athletic event under the names “Gay Games I”

and “Gay Games II.” See id. Thus, the provision restricted

“only the manner in which the [petitioner] may convey its

message.” Id.

Similarly, Section 2(a) of the Lanham Act does not

regulate any expressive message of a trademark, only the

registration of the trademark itself. See Cent. Hudson,

447 U.S. at 562 n.5 (according “full First Amendment

protection to [commercial speech that includes expressive

elements] . . . would blur further the line the Court has

sought to draw in commercial speech cases”); Bd. of Trs.

of State Univ. of N.Y. v. Fox, 492 U.S. 469, 474 (1989) (strict

scrutiny applies only to that commercial speech which

is “inextricably intertwined” with expressive speech;

where “there is nothing whatever ‘inextricable’ about the

noncommercial aspects,” strict scrutiny is not warranted).

Indeed, trademark law protects only those elements

in a mark that have brand significance. For example,

“merely descriptive” words are not registrable unless,

through use in commerce, they take on a new, secondary

meaning—as identifiers of source. 15 U.S.C. §§ 1052(e)(f); Park ‘N Fly, 469 U.S. at 194 (“A ‘merely descriptive’

mark … may be registered only if the registrant shows

that it has acquired secondary meaning.”). To the extent

an expressive component of a mark is deceptive, the

PTO can refuse registration on that basis consistent

with constitutional principles. See, e.g., Bolger v. Youngs

Drug Prods. Corp., 463 U.S. 60, 65 (1983) (“In light of

the greater potential for deception . . . content-based

restrictions on commercial speech may be permissible.”)

(citations omitted); In re Budge Mfg. Co., 857 F.2d 773

(Fed. Cir. 1988), aff’g 8 U.S.P.Q.2d 1790 (T.T.A.B. 1987)

(LOVEE LAMB mark held deceptive for automobile seat

covers not made of lambskin but rather of “simulated

sheepskin.”); In re Bacardi & Co., 48 U.S.P.Q.2d 1031, 1035

(T.T.A.B. 1998) (refusing registration of HAVANA CLUB

mark for non-Cuban rum on the ground that the mark

is primarily geographically deceptively misdescriptive).

For all of these reasons, trademarks are commercial

speech, and restrictions like those at issue here should

receive intermediate scrutiny. As discussed in Section

I(B) below, the restriction on “immoral” and “scandalous”

marks fails intermediate scrutiny and the Court should

confirm its invalidation on that basis.

Strict Scrutiny Is Not Warranted Here

Because Section 2(a) does not suppress speech, but

only denies registration of certain types of trademarks,

strict scrutiny is not appropriate here.

As described above, the Lanham Act generally

does not confer substantive trademark rights. In fact,

“[w]ithout federal registration, a valid trademark may

still be used in commerce” and “can be enforced against

would-be infringers in several ways.” Tam, 137 S. Ct. at

1752 (citations omitted). 3 The denial of the registration

3. Regardless of federal registration, a trademark still can

be protected and enforced under Section 43(a) of the Lanham

Act, which gives rise to an actionable claim for use of “any word,

term, name, symbol, or device, or any combination thereof, or

therefore does not prevent Mr. Brunetti from using the

term “fuct,” either generally or as a mark. This confirms

that intermediate scrutiny is the First Amendment

standard to be applied. Davenport v. Washington Educ.

Ass’n, 551 U.S. 177, 188 (2007) (where the “risk [of the

government’s interference with protected speech] is

inconsequential . . . strict scrutiny is unwarranted”).

Because the trademark system presents little or no risk

of the suppression of speech—particularly the suppression

of speech at the core of the First Amendment, such as

political speech—there is no basis in precedent or policy

for applying strict scrutiny here.

Strict scrutiny historically has been reserved for

regulations that “pose such inherent dangers to free

expression, or present such potential for censorship or

manipulation, as to justify application of the most exacting

level of First Amendment scrutiny.” Turner Broad.

Sys., Inc. v. F.C.C., 512 U.S. 622, 661–62 (1994) (applying

intermediate scrutiny to must-carry provisions of Cable

Television Consumer Protection and Competition Act

of 1992). Here, Section 2(a) does not pose an “inherent

danger[] to free expression” because it does not suppress

use of “immoral … or scandalous” trademarks.

INTA acknowledges that there is arguably a contentbased aspect to the PTO’s refusal to register a purportedly

“immoral” or “scandalous” mark. See Sorrell v. IMS

any false designation of origin, false or misleading description

of fact, or false or misleading representation of fact.” 15 U.S.C.

1125(a)(1) (emphasis added). Accordingly, Section 43(a) remains a

viable cause of action against infringers of immoral or scandalous

marks, regardless of those marks’ ability to be registered under

Section 2(a).

Health Inc., 564 U.S. 564, 566-67 (2011) (content-based

regulations on commercial speech involve “a regulation

of speech because of disagreement with the message

it conveys.”) (citations omitted). Registration would be

permitted but for the PTO’s judgment that the substantive

message of the mark crosses a boundary. Still, the refusal

ultimately is only a restriction on the manner by which

the applicant can propose a commercial transaction—not a

restriction on the proposal itself. The applicant is allowed

to speak the offensive content; it just cannot tell the market

that its mark is federally registered (such as by displaying

the ® symbol next to its mark). Intermediate scrutiny

therefore is the appropriate test. See Cent. Hudson, 447

U.S. at 562 n.5 (rejecting application of “full panoply

of First Amendment protections” to expressive speech

“made only in the context of commercial transactions”). 4

Of course, anything that fails intermediate scrutiny will

also fail strict scrutiny, so the choice of standards, while

analytically important, is not outcome-determinative here.

See Sorrell, 564 U.S. at 571 (“[T]he outcome is the same

whether a special commercial speech inquiry or a stricter

form of judicial scrutiny is applied.”) (citations omitted).

Strict scrutiny exists to protect the ability to engage in

core speech, such as political expression, McIntyre v. Ohio

Elections Comm’n, 514 U.S. 334 (1995) (Ohio’s statutory

prohibition against distribution of any anonymous

campaign literature failed strict scrutiny and violated

the First Amendment); the ability to protest, Texas v.

4. In Sorrell, the Court held that heightened scrutiny applied

to content-based regulations on commercial speech. 564 U.S. at

566. Unlike as in Sorrell, the regulation here imposes no more than

an incidental burden on speech, for the reasons discussed above.

Johnson, 491 U.S. 397 (1989) (conviction for burning the

American flag is inconsistent with the First Amendment);

and freedom of the press, Arkansas Writers’ Project, Inc.

v. Ragland, 481 U.S. 221 (1987) (state sales tax regime

that taxed general interest magazines but exempted

newspapers and religious, professional, trade, and sports

journals violated First Amendment’s freedom of press

guarantee). It does not apply here.

B. Section 2(a) Cannot Survive Intermediate

Scrutiny

As a regulation of commercial speech, Section 2(a)

is reviewed according to the intermediate scrutiny

framework established in Central Hudson. This four-part

test asks whether (1) the speech concerns lawful activity

and is not misleading; (2) the asserted government interest

is substantial; (3) the regulation directly advances that

government interest; and (4) the regulation is “not more

extensive than necessary to serve that interest.” Cent.

Hudson, 447 U.S. at 566. INTA acknowledges that the

immoral or scandalous provision passes muster under the

first prong of the Central Hudson test: The trademarks

here relate to lawful activity, and the proposed restriction

on them is not based on any assertion that they are

misleading. See In re Brunetti, 877 F.3d 1330, 1350 (Fed.

Cir. 2017). Rather, the immoral or scandalous provision “is

concerned with whether a mark is offensive, scandalous, or

vulgar.” Id. But the government has not shown, and cannot

show, that Section 2(a) satisfies the remaining prongs

under Central Hudson. See Sorrell, 564 U.S. at 571-72

(“Under a commercial speech inquiry, it is the State’s

burden to justify its content-based law as consistent with

the First Amendment.”) (citations omitted).

The Gover nment Does Not Have A

Substantial Interest In Prohibiting

The Registration Of “Immoral” Or

“Scandalous” Trademarks

The government appears to assert three possible

interests in restricting the registration of “immoral” or

“scandalous” marks: (a) protection of public order and

morality; (b) protection of the orderly flow of commerce;

and (c) the proposition that trademarks are a form of

government rather than private speech. None of these

arguments has any merit.

The Government Has No Substantial

I nt e r e s t I n P r ot e c ti ng P ublic

Order And Morality Through The

Trademark Registration System

The government argues that its interest in not

registering immoral and scandalous marks is to protect

“the sensibilities of the public.” Brief for Petitioner

at 32-33, Iancu v. Brunetti, No. 18-302 (Jan. 4, 2019)

(“Government Brief”). That argument does not pass

constitutional muster. As this Court has held, a purported

government interest in protecting the public from offensive

speech is not an adequate basis for restricting speech.

Tam, 137 S. Ct. at 1751 (it is a “bedrock First Amendment

principle” that “[s]peech may not be banned on the

ground that it expresses ideas that offend”); see also id.

at 1767 (Kennedy, J., concurring) (“the Court’s cases have

long prohibited the government from justifying a First

Amendment burden by pointing to the offensiveness of the

speech to be suppressed”). Indeed, “the public expression

of ideas may not be prohibited merely because the ideas

are themselves offensive to some of their hearers.” Id. at

1763 (Alito, J., concurring) (quoting Street v. New York,

394 U.S. 576, 592 (1969) and collecting cases); id. at 1767

(Kennedy, J., concurring) (citing Justice Alito’s opinion at

1773-64); see also Johnson, 491 U.S. at 414 (“If there is a

bedrock principle underlying the First Amendment, it is

that the government may not prohibit the expression of an

idea simply because society finds the idea itself offensive

or disagreeable.”).

Protecting The Orderly Flow Of

Commerce Is Not A Legitimate

Gover nmental Interest In This

Context

The government further asserts an interest in

ensuring the orderly flow of commerce, but this too is

without merit. According to the government, scandalous

marks disrupt the marketplace, “making commercial

transactions less efficient.” Government Brief at 34. The

argument fails for two reasons.

First, the argument is counterfactual by any measure.

The Victorian era ended long ago. Yet the government’s

brief seems to imagine a world in which decorous matrons

are bringing commerce to a halt by collapsing in store

aisles at the sight of a provocative brand name. That is

simply not the world where trademark owners and their

customers actually live. It is well-settled that imagined

disturbances to public order cannot support restrictions on

protected speech. See Tinker v. Des Moines Indep. Cmty.

Sch. Dist., 393 U.S. 503, 508 (1969) (“undifferentiated fear

or apprehension of disturbance is not enough to overcome

the right to freedom of expression”).

Second, as the government acknowledges, the

“predominant function” of a trademark is not to maintain

public order in the marketplace, but simply to allow

customers to easily identify and distinguish the source

of goods or services. Wal-Mart Stores, Inc. v. Samara

Bros., 529 U.S. 205, 212 (2000). Even if some customers

do actually find “immoral … or scandalous” marks to be

shocking, that does not mean the marks are any less strong

as source indicators. Common sense actually suggests the

opposite: “marks with shock value can bring tremendous

attention to a brand.” B. Iverson, Matal v. Tam: What’s

New and What to Watch in Registration of Disparaging,

Immoral, and Scandalous Trademarks, IP Watch Dog

(Sept. 28, 2018), http://www.ipwatchdog.com/2018/09/28/

matal-v-tam-turns-disparaging-immoral-scandaloustrademarks/id=101469/ (noting that brands like Dirty

Dick’s Crab House and French Connection UK, which uses

FCUK on clothing, have leveraged this “shock value” in

their advertising to bring more attention to their brands);

see also DIRTY DICKS, Reg. No. 2,087,524 (registered

for restaurant services); FCUK, Reg. No. 5,301,912

(registered for clothing). Far from interrupting the flow

of commerce, such marks have succeeded in drawing

attention to their brands and becoming powerful source

indicators, thereby supporting efficient commerce.

Restrictions On Trademark

Registrations Cannot Be Overcome

By Mischaracterizing Trademarks

As The Appearance Of Government

Speech

Nor can the “immoral” or “scandalous” restrictions be

justified by characterizing trademarks as the equivalent

of government speech. See Government Brief at 34

(arguing that “the government has a legitimate interest

in avoiding not just the ‘reality,’ but also the ‘appearance,’

of government approval of vulgar speech”). Trademarks

originate with the private parties that create them.

Through the federal trademark system, the government

is not speaking, but simply providing an administrative

system for registration and enforcement. See Tam, 137 S.

Ct. at 1760 (“Trademarks are private, not government,

speech.”).

Moreover, the government should not attempt to

speak on behalf of all consumers by deciding, on the basis

of the immoral or scandalous provision, which marks

should enjoy the benefit of registration. In our timehonored capitalist system, picking winners and losers

among trademarked goods and services is a decision for

consumers themselves. If a trademark is offensive to

the public, consumers may respond by not purchasing

the product or service. In turn, any product or service

that cannot support itself in the market will be unable

to sustain federal registration, since marks that are not

in use lose their right to a trademark registration. See

United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90,

97 (1918) (“the right to a particular mark grows out of its

use, not its mere adoption”); 15 U.S.C. § 1051 (mark cannot

be registered unless it is used in commerce); 15 U.S.C.

§ 1058 (registrations will be cancelled if registrant fails

to file an affidavit confirming the mark remains in use in

commerce).

Even If The Government Had A Substantial

Interest, The Immoral Or Scandalous

Provision Does Not Advance That Interest

The immoral or scandalous provision of Section 2(a) of

the Lanham Act does not advance any substantial interest

the government may have here. This prong of Central

Hudson requires the government to “demonstrate that the

harms it recites are real and that its restriction will in fact

alleviate them to a material degree.” Edenfield v. Fane,

507 U.S. 761, 770-771 (1993). If the government “provides

only ineffective or remote support for [its] purpose,” the

regulation may not be sustained. Cent. Hudson, 447 U.S.

at 564.

None of the government’s purported interests are

“alleviated” by the immoral or scandalous provision. First,

the provision is incapable of advancing the government

interest of protecting public order and morality; the public

is exposed to offensive content in many other contexts

besides trademarks. Copyright law, for example, supports

registration of all sorts of vulgar materials that may be

considered offensive under the Lanham Act. See Brunetti,

877 F.3d at 1357 (“No doubt many works registered with

the Copyright Office offend a substantial composite of the

general public.”); Mitchell Bros. Film Group v. Cinema

Adult Theater, 604 F.2d 852 (5th Cir. 1979) (upholding

against an obscenity-based challenge; “[t]here is nothing

in the Copyright Act to suggest that the courts are to pass

upon the truth or falsity, the soundness or unsoundness,

of the views embodied in a copyrighted work” (quoting

Belcher v. Tarbox, 486 F.2d 1087, 1088 (9th Cir. 1973))).

Nor can the government interest of protecting the

orderly flow of commerce be advanced through Section

2(a). Scandalous and immoral trademarks still can be

used in commerce, and still can be protected against

infringement, even absent federal registration.

Finally, if the government’s objective is to avoid giving

imprimatur to these marks, then Section 2(a) does not

achieve such an interest. Even if trademark registrations

were deemed a government imprimatur—which they are

not, Tam, 137 S. Ct. at 1760—they would mean little to

the general public who knows “no more about trademark

registrations than a man walking down the street in

a strange city knows about legal title to the land and

buildings he passes.” Application of Nat’l Distillers &

Chem. Corp., 297 F.2d 941, 949 (C.C.P.A.1962) (Rich, J.

concurring); see also Tam, 137 S. Ct. at 1760 (“there is

no evidence that the public associates the contents of

trademarks with the Federal Government”).

Moreover, because the ter ms “ immoral” and

“scandalous” are so inherently vague and inconsistently

applied, Section 2(a) cannot possibly advance any

government interest. See Greater New Orleans Broad.

Ass’n, Inc. v. United States, 527 U.S. 173, 190, (1999)

(where “regulatory regime is so pierced by exemptions

and inconsistencies,” it does not materially advance

government interest). This inherent vagueness is a fatal

constitutional flaw. The statutory text itself provides no

guidance as to what either word means in this context.

That lack of guidance cannot be cured by reference

to any settled general meaning in the law, for neither

“immoral” nor “scandalous” has any such generally

accepted meaning. Black’s Law DIctIonary, for example,

simply refers to Section 2(a): It defines “scandalous subject

matter” as a “word, phrase, symbol or graphic depiction

that the U.S. Patent and Trademark Office may refuse to

Scandalous Subject Matter, Black’s Law DIctIonary (10th

ed. 2014). It also notes that, “[a]though the Lanham Act

uses the phrase ‘immoral, deceptive, or scandalous subject

matter,’ courts have not distinguished ‘scandalous’ from

‘immoral.’” Id.; see also Immoral, Black’s Law DIctIonary

(10th ed. 2014) (defining immoral as “[i]nconsistent with

what is right, honest, and commendable,” “[i]nimical to the

general welfare,” and “[n]ot following accepted standards

of sexual behavior”). 5

Compound i ng the con f usion, “ i m mora l” a nd

“scandalous” have been treated as interchangeable

despite the basic principle of statutory interpretation

that different words be given different meanings. See,

e.g., Henson v. Santander Consumer USA Inc., 137 S.

Ct. 1718, 1723 (2017) (when interpreting statutes, Court

presumes differences in language convey differences

5. A useful contrast can be drawn to obscenity, where there

is at least a settled framework for considering the issue. See Miller

v. California, 413 U.S. 15, 24 (1973) (noting that state statutes

designed to regulate obscene materials must be carefully limited

and articulating a three-part standard for the trier of fact: “(a)

whether the average person, applying contemporary community

standards would find that the work, taken as a whole, appeals to

the prurient interest; (b) whether the work depicts or describes,

in a patently offensive way, sexual conduct specifically defined

by the applicable state law; and (c) whether the work, taken as a

whole, lacks serious literary, artistic, political, or scientific value)”

(internal citations and quotation marks omitted). Section 2(a) of

the Lanham Act casts a net far wider than prohibiting registration

of only obscene marks.

in meaning); Vonage Holdings Corp. v. F.C.C., 489 F.3d

1232, 1240 (D.C. Cir. 2007) (“we have repeatedly held

that, ‘[w]here different terms are used in a single piece

of legislation, the court must presume that Congress

intended the terms to have different meanings’”) (citation

omitted). The PTO seems to have thrown up its hands: It

generally applies the bar on “immoral” or “scandalous”

marks as a unitary provision, without attempting to

give independent significance to each word. Trademark

Manual of Examining Procedure § 1203.01 (8th Ed. Oct.

2018) (“TMEP”) (placing immoral matter and scandalous

matter in the same category); In re Brunetti, 877 F.3d at

1336 (citing Gilson LaLonde & Gilson, Trademarks Laid

Bare: Marks That May Be Scandalous or Immoral, 101

Trademark Rep. 1476, 1489 (2011) (“U.S. courts and the

Board have not distinguished between ‘immoral’ and

‘scandalous’ and have focused on whether marks are

scandalous or offensive rather than contrary to some

accepted standard of morality.”) (citation omitted)).

Not surprisingly, given the vagueness of the statute

on its face, the PTO’s efforts to develop a framework

can fairly be described as simply a long list of words and

concepts, one piled on the other, but all lacking in clarity.

The PTO asks whether “a substantial composite of the

general public” would find the mark scandalous, which

it defines as “shocking to the sense of truth, decency or

propriety; disgraceful; offensive; disreputable; . . . giving

offense to the conscience or moral feelings; . . . or calling

out for condemnation.” In re Fox, 702 F.3d 633, 635 (Fed.

Cir. 2012) (alterations omitted) (quoting In re Mavety

Media Group Ltd., 33 F.3d 1367, 1371 (Fed. Cir. 1994)).

Alternatively, “the PTO may prove scandalousness by

establishing that a mark is ‘vulgar.’” Id. (citing In re

Boulevard Entm’t, Inc., 334 F.3d 1336, 1340 (Fed. Cir.

2003)). Vulgar marks are those “lacking in taste, indelicate,

[and] morally crude.” In re Brunetti, 877 F.3d at 1336. The

PTO must make its determination as to whether a mark

is scandalous “in the context of contemporary attitudes”

and “in the context of the marketplace as applied to only

the goods described in the application.” Fox, 702 F.3d at

635 (internal quotation marks and alterations omitted).

How a lone PTO examiner is supposed to measure

“a substantial composite of the general public,” or assess

these various standards of decency and disgrace, is never

articulated, nor could it be. It is no surprise, then, that

“the Trademark Trial and Appeal Board has itself noted

the vague and subjective nature of the scandalous inquiry.”

In re Brunetti, 877 F.3d at 1354 (citing In re In Over Our

Heads, Inc., 16 U.S.P.Q.2d 1653 (T.T.A.B. 1990) (“the

guidelines for determining whether a mark is scandalous

or disparaging are somewhat vague and the determination

of whether a mark is scandalous or disparaging is

necessarily a highly subjective one” (internal quotations

and citations omitted))).

The real-world experience of INTA members confirms

that the statute is a meaningless mess that cannot be

rescued from its First Amendment failings:

• Nearly identical marks have been approved by one

examining attorney and rejected as scandalous or

immoral by another. Compare, e.g., GOT MILF,

Reg. No. 5,451,844 (registered for women’s

lifestyle blogs), with FROM SOCCER MOM TO

MILF, App. Ser. No. 77/686,422 (filed Mar. 9, 2009)

(application for self-help books for women refused

on grounds that mark was immoral or scandalous);

CUM TOGETHER, Reg. No. 2,844,606 (registered

for adult content but later expired for failure to

renew) with YOU CUM LIKE A GIRL, App. Ser.

No. 78/682,282 (filed Aug. 6, 2005) (application for

tank tops and lingerie refused on grounds that

mark was immoral or scandalous); and BOX-OCOCKS, Reg. No. 5,605,526 (registered for online

novelty store), with COCK IN SOCK, App. Ser.

No. 86/612,223 (filed Apr. 28, 2015) (application

for adult sexual aid refused on grounds that mark

was immoral or scandalous).

• Further examples are legion. Compare, e.g.,

DICK-TEEZ, Reg. No. 5,351,420 (registered

for clothing), with DICK SOCK, App. Ser. No.

86/459,649 (filed Nov. 20, 2014) (application for

t-shirts refused on grounds that mark was

immoral or scandalous); and BUZZED BEAVER,

Reg. No. 4,812,818 (registered for liqueurs), with

BEAVER SHOT, App. Ser. No. 85/619,824 (filed

May 8, 2012) (application for energy drinks refused

on grounds that mark was immoral or scandalous).

• As the Federal Circuit noted in In re Brunetti¸ the

PTO has even been inconsistent with marks that

reference the indisputably vulgar term “fuck,” like

the mark at issue here. 877 F.3d at 1354. The PTO

registered the mark FCUK, Reg. No. 5,301,912

(registered for clothing), but rejected the marks

FUCT, App. Ser. No. 85/310,960 (filed May 3, 2011)

(for clothing) and F**K PROJECT, App. Ser. No.

79/141,996 (filed Oct. 18, 2013) (for leather goods),

as scandalous.

• Derivatives of “fuck” likewise have met inexplicably

different fates. It allowed the registration of

MUTHA EFFIN BINGO, Reg. No. 4,183,272

(registered for restaurant services but later

expired for failure to renew), and IF WE TOUCH

IT, IT ’S FN GOLDEN, Reg. No. 4,100,978

(registered for film production but later expired for

failure to renew), but not F ALL F’S APPAREL

FOR THE F’N ANGRY, App. Ser. No. 78/420,315

(filed May 17, 2004) (for clothing).

Countless words are innocuous in some contexts and

provocative (sexually or otherwise) in other contexts. Ass,

balls, beaver, boob, cock, dick, hump, or pussy are but a

few examples. Yet the lines between an innocent usage, a

permissible double entendre, and a usage so provocative

as to be denied registration are so vague that they may

as well be invisible. It is difficult to avoid the conclusion

that examiners and their supervisors are simply left to

make their own subjective determinations as to whether

a mark is “immoral … or scandalous.” This total lack of

authoritative construction of the statute is the opposite

of constitutional. See Dombrowski v. Pfister, 380 U.S.

479, 490-91 (1965) (fatal vagueness can be avoided by

“authoritative constructions [that] sufficiently illuminat[e]

the contours of [the] otherwise vague prohibition.”). 6

6. INTA acknowledges that individual PTO examiners are

supposed to consult with their supervisors before determining that

a proposed mark is immoral or scandalous. See TMEP § 1203.01.

As demonstrated by the examples of inconsistent results noted

above, this consultation process does nothing to solve the inherent

subjectivity of the PTO’s decision of whether a particular mark is

impermissibly scandalous or immoral.

Accordingly, even if the Court assumes that the

protection of the general public and the channels of

commerce are legitimate purposes in the Central Hudson

analysis, Section 2(a) plainly fails to advance those

purported interests.

The Immoral Or Scandalous Provision

Is Not Narrowly Tailored To Achieve The

Desired Objective

Section 2(a) also fails the final Central Hudson prong,

which commands that the restriction on speech be “no[]

more extensive than necessary to serve the interests

that support it.” Greater New Orleans Broad. Ass’n, 527

U.S. at 188. Section 2(a) is facially overbroad: As noted

above, the statutory language sweeps broadly enough to

prevent registration of an enormous number of words that

merely have a potentially sexual, excretory, or otherwise

offensive meaning in a given context.

The PTO’s approach to determining immorality or

scandalousness does nothing to cure the overbreadth, nor

could it. As noted above, PTO examiners and supervisors

essentially are left to their own devices: In a word, the

process is subjective. Determinations of immorality

and scandalousness are very different from other

determinations that examiners must make, in areas where

their training and the objective nature of the evidence

will control. See e.g., 15 U.S.C. § 1052(a) (refusal of mark

on basis of deceptiveness); 15 U.S.C. § 1052(d) (refusal

of mark on basis of likelihood of confusion); 15 U.S.C.

§ 1052(e)(1) (refusal of mark that is merely descriptive); 15

U.S.C. § 1052(e)(2) (refusal of mark on basis of geographic

significance).

The analysis required by the immoral or scandalous

provision of Section 2(a), in contrast, does not fall within

any civil servant’s expertise. Whether a trademark is so

“immoral” or “scandalous” that it should be disadvantaged

in the marketplace is instead best decided by consumers

voting with their wallets. As the Court has stated, “[a]t the

heart of the First Amendment lies the principle that each

person should decide for himself or herself the ideas and

beliefs deserving of expression. . . . Our political system

and cultural life rest upon this ideal.” Turner Broad. Sys.,

Inc., 512 U.S. at 641.

Given the “highly subjective” nature of the immoral

or scandalous provision, the government fails the

requirement under Central Hudson that any limitation

on commercial speech be narrowly tailored. Importantly,

invalidation of the immoral or scandalous provision

in Section 2(a) does not deprive the government of all

authority in this area. Congress still would be free to enact

restrictions on trademark registration that are carefully

targeted to address the few categories of speech where

First Amendment protection is weakest or nonexistent.

See Ashcroft v. Free Speech Coalition, 535 U.S. 234,

245-46 (2002) (“The freedom of speech has its limits; it

does not embrace certain categories of speech, including

defamation, incitement, obscenity, and pornography

produced with real children.”).

II. The Immoral Or Scandalous Provision Also Is Void

For Vagueness

The vagueness of the immoral or scandalous provision

in Section 2(a) also warrants a ruling that the provision is

unconstitutionally vague. The Court has made clear that

a regulation of speech “raises special First Amendment

concerns because of its obvious chilling effect on free

speech.” Reno v. American Civil Liberties Union, 521

U.S. 844, 871-72 (1997) (statute criminalizing transmission

of “indecent” or “patently offensive” information over

the internet to minors facially unconstitutional under

the First Amendment) (citations omitted); see also F.C.C.

v. Fox Television Stations, Inc., 567 U.S. 239, 253-54

(2012) (“When speech is involved, rigorous adherence

to [due process concerns] is necessary to ensure that

ambiguity does not chill protected speech.”). Indeed,

“this requirement of clarity in regulation . . . requires the

invalidation of laws that are impermissibly vague.” Fox

Television Stations, 567 U.S. at 253.

The test is simple: Where a statute fails to provide “a

person of ordinary intelligence [with] fair notice of what

is prohibited, or is so standardless that it authorizes or

encourages seriously discriminatory enforcement,” it is

void for vagueness. United States v. Williams, 553 U.S.

285, 304 (2008). That the immoral or scandalous provision

fails this test, just as it fails intermediate scrutiny, is plain

from the discussion in Section I above.

This vagueness has severe consequences in the real

world, especially for small business owners. A recent

law review article confirmed that small businesses are

disproportionately harmed by the current regime. See

Carpenter & Garner, NSFW: An Empirical Study of

Scandalous Trademarks, 33 Cardozo Arts & Ent. L. J.

321 (2015). The authors conducted an in-depth review of

trademark applications for marks containing the words

“bitch,” “pothead,” “shit,” “slut” and “whore.” They

found that, with the exception of “shit,” the PTO had

inconsistently registered marks containing each of these

terms as a primary feature. Id. at 359. Small businesses,

unlike large brand owners, often lack the resources to

pursue an extended trademark prosecution, much less

the arduous appeals process. See id. at 364 (noting that

small business applicants frequently subjected to rejection

under the immoral or scandalous provision were pro

se and unlikely to respond to refusals). Frequently, an

applicant abandons its trademark application once the

examining attorney issues an office action rejecting a

mark on “immoral … or scandalous” grounds. Id. at 347

(noting that there was no response to office actions in 80%

of rejections studied).

The Carpenter and Garner study underscores the

practical need to strike down this unconstitutional

law. As it currently stands, the immoral or scandalous

provision leaves trademark owners to guess whether an

investment in developing a particular mark is worthwhile,

and disproportionately affects small business owners.

By striking the provision, this Court will help to put

businesses of all sizes on a level playing field.

III. The Trademark Registration System Is Not A

Government Subsidy That Entitles The Government

To Engage In Viewpoint Discrimination

Trademark Registration Does Not Implicate

Congress’s Powers To Spend Or Control

Government Property

The Constitution’s Spending Clause gives Congress

broad discretion to tax and spend for the “general

Welfare,” including funding particular state or private

programs and activities. See Agency for Int’l Development

v. Alliance for Open Society Int’l, Inc., 570 U.S. 205, 213

(2013). The Court has recognized that Congress may

impose conditions on the receipt of federal funds, even

if such conditions “affect the recipient’s exercise of its

First Amendment rights,” but may not “seek to leverage

funding to regulate speech outside the contours of the

program itself.” Id. at 214-15. Although deciding how to

categorize a particular restriction may be challenging, as

in Tam, “no difficult question is presented” here because

the trademark registration system does not implicate

the Spending Clause. See Tam, 137 S. Ct.at 1761 (Alito,

J., concurring).

As Justice Alito’s plurality opinion in Tam recognized,

the Court’s cases upholding the constitutionality of

government programs that impose restrictions on

speech have involved either direct cash subsidies or the

equivalent. See, e.g., United States v. Am. Library Ass’n,

Inc., 539 U.S. 194 (2003) (conditioning funding for libraries

on the installation of filtering software did not violate First

Amendment); Nat’l Endowment for Arts v. Finley, 524

U.S. 569 (1998) (statute requiring National Endowment

for the Arts to consider, among other things, “general

standards of decency and respect,” in judging grant

applications did not violate First Amendment); Rust v.

Sullivan, 500 U.S. 173 (1991) (upholding as constitutional

regulations prohibiting recipients of family planning funds

from engaging in abortion-related services); see also In

re Brunetti, 877 F.3d at 1345 (“[t]he Supreme Court has

never extended the subsidy doctrine to situations not

involving financial benefits” (quoting Autor v. Pritzker,

740 F.3d 176, 183 (D.C. Cir. 2014)).

In contrast, the trademark registration system

“is nothing like the programs at issue in” the Court’s

government subsidy cases. See Tam, 137 S. Ct. at 1761

(Alito, J., concurring). As the Court’s plurality decision

in Tam correctly recognized, the trademark registration

system actually involves the opposite of a government

subsidy, namely the payment of money to the federal

government, rather than by the federal government. See

id.; In re Brunetti, 877 F.3d at 1344. In particular, an

applicant must pay the U.S. Patent and Trademark Office

an initial fee of $225-$600 when the application is filed,

and once the registration issues the owner must pay an

additional fee of $300-$500 every ten years to maintain

it. Tam, 137 S. Ct. at 1761 (Alito, J., concurring). Since

1991, the fees paid by applicants and registrants have

fully funded the direct operating expenses associated with

the federal trademark registration system. See id.; In re

Brunetti, 877 F.3d at 1344 (citing 35 U.S.C. § 42(c)(1)).

Because the trademark registration system does

not implicate the federal government’s power to spend

or control government property, the Spending Clause

cannot justify the rejection of supposedly “immoral … or

scandalous” trademarks under Section 2(a) of the Lanham

Act.

B. Under The Government’s Position, Any

Government Registration Program, Including

That For Copyrights, Would Provide The

Government With Censorship Rights

The Government argues vainly, as it did in Tam,

that the government subsidy cases are “not limited to

circumstances involving the direct provision of government

money or control over physical property.” Government

Brief at 41. In support of this argument, it asserts that

Justice Alito’s plurality opinion in Tam, analyzing the

Court’s decisions in Davenport v. Washington Ed. Ass’n,

551 U.S. 177 (2007), and Ysursa v. Pocatello Ed. Ass’n, 555

U.S. 353 (2009), confirmed that the Federal Circuit erred

“in treating precedents related to government programs

as limited to Spending Clause legislation or physical

property.” Government Brief at 43. The Government’s

reliance on the plurality decision in Tam is mistaken, for

several reasons.

First, the plurality in Tam expressly concluded

that Davenport and Ysursa provided no support for the

Government’s position because they are wholly irrelevant

to the trademark registration system. Tam, 137 S. Ct. at

1762 (Alito, J., concurring). As Justice Alito explained in

Tam, those two decisions involved “a special area of First

Amendment case law” that is “far removed” from the

trademark registration system and no more relevant than

are the government subsidy cases. Tam, 137 S. Ct. at 176162, 1762 n.15 (Alito, J., concurring). In particular, they

involved situations where a state government provided

unions with a significant non-cash benefit (the right to have

public employers collect agency fees from employees and

remit those fees to the union) but refrained from providing

an even greater benefit (the right to collect dues for use

in connection with election or political action committee

activities), thus choosing to promote some activities but

not others. Id. at 1762. No such non-cash benefit is at issue

with respect to the trademark registration system, where

the activities in question are funded by the applicants and

registration owners. In re Brunetti, 877 F.3d at 1344.

Moreover, as the Court noted in both Davenport and

Ysursa, unions have no constitutional right under the First

Amendment in government assistance for the collection

of fees for election or political activities. See 551 U.S.

at 189-90; 555 U.S. at 359. That is very different from

the situation here, where First Amendment rights are

unambiguously implicated. See Tam, 137 S. Ct. at 1760

(finding trademarks are private speech and thus subject

to First Amendment protection).

Second, setting aside Davenport and Ysursa, the

Government’s argument that the Spending Clause

applies to registration systems even where there is

no direct government spending ignores the fact that

virtually every government service, including other

government registration schemes such as the federal

of government funds. Id. at 1761. As the Court noted in

Tam, there is no principled basis for treating copyrights

differently from trademarks. Id. at 1760, aff’g In re

Tam, 808 F.3d 1321, 1346 (Fed. Cir. 2015) (noting that

“[c]opyright registration has identical accoutrements” to

trademark registration). Thus, under the Government’s

approach, every registration system, including the

censorship.

That is not the law. As the Court expressly recognized

in Agency for International Development, even where

the government is expending resources, which even the

Government does not argue is the case here, Congressional

authority under the Spending Clause is not unlimited

and does not justify every government restriction on

First Amendment rights. See 570 U.S. at 214. Because

the Government’s argument recognizes no limitation on

government censorship, it is untenable and should be

rejected here just as it was in Tam.

CONCLUSION

For the foregoing reasons, the Court should affirm

on the basis that trademarks are commercial speech,

that governmental regulations thereof are subject

to intermediate scrutiny, and that the immoral or

scandalous provision of Section 2(a) of the Lanham Act is

unconstitutional by that standard.

March 25, 2019

DavID Donahue

Fross ZelnIck Lehrman

& ZIssu, P.C.

4 Times Square, 17th Floor

New York, New York 10036

(212) 813-5900

Respectfully submitted,

DavID H. BernsteIn

Counsel of Record

Jeremy FeIgelson

Pooja A. BoIsture

mIchael C. mcGregor

JaIme m. FreIlIch

DebevoIse & PlImPton LLP

ClauDIa Ray

919 Third Avenue

KIrklanD & EllIs LLP

New York, New York 10022

601 Lexington Avenue

(212) 909-6696

New York, New York 10022 dhbernstein@debevoise.com

(212) 446-4800

Attorneys for Amicus Curiae

The International Trademark Association

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.