# Amicus Curiae Brief — Iancu v. Brunetti, 139 S. Ct. 782 (2019) (No. 18-302)

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Amicus Curiae Brief
- **Published:** January 1, 2019

## Text

No. 18-302

IN THE

Supreme Court of the United States

ANDREI LANCU, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY AND
DIRECTOR, PATENT AND TRADEMARK OFFICE,

Petitioner,
U.
ERIK BRUNETTI,
Respondent.

On Writ or CERTIORARI TO THE UNITED STATES
Court or APPEALS FOR THE FEDERAL Cixcurr

AMICUS CURIAE BRIEF OF THE
INTERNATIONAL TRADEMARK ASSOCIATION
IN SUPPORT OF RESPONDENT

Davip DoNAHUE Davip H. BERNSTEIN
F Ross ZNLNICK LEHRMAN Counsel of Record
& Zissu, PC. JEREMY FEIGELSON

4 Times Square, 17 Floor Pooja A. BoisturE
New York, New York 10036 Muicnage. C. McGrecor

(212) 813-5900 JAIME M. FREILICH
Despevoise & Plimpton LLP

CLAUDIA Ray 919 Third Avenue

KIRKLAND & ELIAS 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

287422

i

TABLE OF CONTENTS

Page
r Ü—¹oòZvß i
TABLE OF CITED AUTHORITIES .............. iv
INTERESTS OF THE AMICUS CURIAE.......... 1
SUMMARY OF ARGUMEĩNTrm . 3
, ˙ r...... 7

I. Section 2(a) Cannot Survive Intermediate

Scrutiny, Which Is The Appropriate
EE ͤ ( 5 7

A. Intermediate Serutiny Is The
Appropriate Standard Of Review 8

1. Trademarks Are Commereial

Speech, Restrictions On Which

Are Subject To Intermediate
%% ˙̃ , 8

2. Striet Serutiny Is Not Warranted
T e 12

B. Section 2(a) Cannot Survive
Intermediate Scrutiny ........escesees. 15

1. The Government Does Not Have A

Substantial Interest In Prohibiting

The Registration Of “Immoral” Or

“Scandalous” Trademarks 16

i

Table of Contents

Page
a. The Government Has No
Substantial Interest In
Protecting Publie Order
And Morality Through The
Trademark Registration
reren 16
b. Protecting The Orderly Flow Of
Commerce Is Not A Legitimate
Governmental Interest In
PEED . 17
ce. Restrictions On Trademark
Registrations 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
Provision Is Not Narrowly
Tailored To Achieve The Desired
% ĩ ² A 00 27
II. The Immoral or Scandalous Provision
Also is Void for Vagueness.................. 28

170

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 Copyrights,
Would Provide The Government
With Censorship Rights................ 32

„ So ccccccvececccsescoececvesesees¢ 35

iv

TABLE OF CITED AUTHORITIES

CASES

Agency for Intl Development v.
Alliance for Open Society Int'l, Inc,

.

Application of Nat Distillers
& Chem. Corp.,

297 F.2d 941 (C.C.P.A. 1962ꝶ· u

Arkansas Writers’ Project, Inc. v. Ragland,

Ame.

Ashcroft u. Free Speech Coalition,

535 U.S. 284 0000) eee eeneeeee

Autor v. Pritzker,

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

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

Gun...

Belcher u. Tarbox,

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

Bolger v. Youngs Drug Prods. Corp.,

.

Page

*

Cited Authorities

Cent. Hudson Gas & Elec. Corp. v.
Pub. Serv. Comm u of New York,

unedlen. x

Davenport v. Washington Educ. Ass n,

ens.

Dombrowski u. Pfister,

380 U.S. 479 (1965) .

Edenfield v. Fane,

nns.

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

nne.

Friedman v. Rogers,

nie.. e

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

527 U.S. 178 (999 ũ UEU[U mr evcnns

Henson v. Santander Consumer USA Inc.,

arne...

In re Bacardi & Co,

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

In re Boulevard Entm'’t, Inc.,

334 F.3d 1336 (Fed. Cir. 2003)

vi

Cited Authorities

In re Brunetti,
877 F.3d 1330 (Fed. Cir. 2017) ....

In re Budge Mfg. Co.,
857 F.2d 773 (Fed. Cir. 1988) .....

In re Fox,
702 F.3d 633 (Fed. Cir. 2012) .....

In re In Over Our Heads, Inc.,
16 U.S.P.Q.2d 1653 (T.T.A.B. 1990)

In re Mavety Media Group Lid.,
33 F.3d 1367 (Fed. Cir. 1994) .....

In re Tam,
808 F.3d 1321 (Fed. Cir. 2015) ....

Matal v. Tam,
e

Melutyre v. Ohio Elections Comm'n,
514 U.S. 334 (19950Ʒ ).

Miller v. California,
| GS eee

Mitchell Bros. Film Group v. Cinema
Adult Theater,
604 F.2d 852 (5th Cir. 1979).......

vit

Cited Authorities
Page

Nat'l Endowment for Arts u Finley,

, ẽ r ceendues 31
Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc.,

D hc cpanadeeceeese teusas 6 8,11
Reno v. American Civil Liberties Union,

e · 29
Rust v. Sullivan,

F CRS SE ole Ete 31
S. F. Arts & Athletics, Inc. u. U.S. Olympic

Committee,

, ˙ ath ac heeha 10, 11
Sorrell v. IMS Health Inc.,

D idbbiescauwdie 13-14, 15
Street v. New York,

r cece. Las beahsee chesudes 17
Texas v. Johnson,

D ee deed 14-15, 17
Tinker v. Des Moines Indep. Cmty. Sch. Dist.,

r ˙ Ä... ˙—6e[ e 17

Turner Broad. Sys., Inc. u. F.C. C,
D ĩ ſTTTT ents 13, 28

viii

Cited Authorities
Page

United Drug Co. v. Theodore Rectanus Co.,

r cotta gaan suaees ett 19
United States u Am. Library Ass un, Inc,

D oc cve Scbeacudeeceesacecckeu 31
United States v. Williams,

F Shoes oe cacheeaweséeceuen 29
Vonage Holdings Corp. u F.C. C.,

489 F.3d 1232 (D.C. Cir. 2007) ...............4.. 23
Wal-Mart Stores, Inc. v. Samara Bros.,

D ͥ res 18
Ysursa v. Pocatello Ed. Ass n,

D ̃ OA—WA»—»—— ——— ta 33
STATUTES
r ˙ ͤ . eencanbadts 19
r » aun 3, 27
eee 27
Z 11

ö. eee 27

ix

Cited Authorities
Page
, ¶ . ¼—¼iÜ. estan Gin 27
D ] § ͤ 11
D é WAA... ̃ĩ¾ . K 19
e x nnn 13
r . ̃ Ä 8
, ̃ a eee eee eee ee 32
OTHER AUTHORITIES
B. Iverson, Matal v. Tam: What’s New and What
to Watch in Registration of Disparaging,
Immoral, and Scandalous Trademarks,
IPWatchDog.com (Sept. 28, 2018), http:/
www.ipwatchdog.com/2018/09/28/matal-v-
tam-turns-disparaging-immoral-scandalous-
trademarks/id=101469/ .... 2... 2... ccc e ec eeeees 18
Carpenter & Garner, NSFW: An Empirical
Study of Scandalous Trademarks,
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

x

Cited Authorities

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

J. Thomas McCarthy, McCartuy on TRADEMARKS
AND Unrair Competition (5th ed. 2019 ........ 9, 10

Scandalous Subject Matter, Black’s Law
Dictionary (10th ed. 2014)................00005- 22

Trademark Manual of Examining Procedure
§ 1203.01 (8th ed. Oct. 2018)................ 23, 26

1

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).

INTERESTS OF THE AMICUS CURIAE

Amicus curiae the International Trademark
Association INT) 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 (formerly known 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.

2

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.? 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. Mall- Street. com, LLC, 568 U.S. (2019) Matal u. 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., 185 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. u A. VE. 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); T7 Ltd. v.
Punchgini, Inc., 482 F.3d 135 (2d Cir. 2007); Lowis 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).

3

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

1

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

5

Central Hudson Gas & Electric Corp. u 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

6

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 appli 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

7

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 government likewise 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

I. 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?

8

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.

A. Intermediate Scrutiny Is The Appropriate
Standard Of Review

1. 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. u. 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

9

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 (without 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, McCartuy on
TRADEMARKS AND UNFAIR CoMPETITION § 19:9 (5th ed. 2019)
(“McCartuy”). This Court should confirm the principle,
well-settled even before Tam, that trademarks inherently
are commercial speech. See Friedman v. Rogers, 440 U.S.

10

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. H. 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 tra iemark 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, “[ bly prohibiting the use of one word for

11

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 |”
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 Ts.
of State Univ. of N_Y. 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

12

restrictions on commercial speech may be permissible.”)
(citations omitted); In re Budge Mfg. Co., 857 F.2d 773
(Fed. Cir. 1988), affg 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
IB) below, the restriction on “immoral” and “scandalous”
marks fails intermediate scrutiny and the Court should
confirm its invalidation on that basis.

2. 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,
without 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).* The denial of the registration

3. Regardless of federal registration, a trademark stil! 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

13

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. u. 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 content-

based 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).

14

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“).
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 ([The 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 u. 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.

15

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).

16

1. The Government 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.

a. The Government Has No Substantial
Interest In Protecting Public
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, Jancu 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

17

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, I., 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.”).

b. Protecting The Orderly Flow Of
Commerce Is Not A Legitimate
Governmental 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 u. 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”).

18

Second, as the government acknowledges, the
“predominant function” of a trademark is not to maintain
publie 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-scandalous-
trademarks/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.

c. 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

19

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, 1378.
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 time-
honored 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).

20

2. 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
copyright on pornographic film “Behind the Green Door”
against an obscenity-based challenge; there is nothing
in the Copyright Act to suggest that the courts are to pass
apon 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))).

21

Nor can the government interest of protecting the
orderly flow of commerce be advanced through Section
2(a). Seandalous 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 terms “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,

22

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
register because it is shockingly offensive to social mores.”
Scandalous Subject Matter, BLack’s Law Dictionary (10th
ed. 2014). It also notes that, “[aJthough 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,” ¶inimical to the
general welfare,” and “(njot following accepted standards
of sexual behavior“).

Compounding the confusion, “immoral” and
“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 (e) 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.

23

in meaning); Vonage Holdings Corp. v. F.C.C., 489 F.3d
1232, 1240 (D.C. Cir. 2007) (“we have repeatedly held
that, ‘[wjhere 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

24

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., 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

25

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-O-
COCKS, 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.

26

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 illuminatſe]
the contours of [the] otherwise vague prohibition.”).*

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.

27

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.

3. 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 u, 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).

28

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, ſaſt 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

29

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

30

inconsistently registered marks containing each of these
terms as a primary feature. /d. 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

A. 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

31

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.” Jd. 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 (the 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)).

32

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(©)(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

33

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. Assen,
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 1761-
62, 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.

34

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
copyright registration system, involves the expenditure
of government funds. /d. at 1761. As the Court noted in
Tam, there is no principled basis for treating copyrights
differently from trademarks. Id. at 1760, g In re
Tam, 808 F.3d 1321, 1346 (Fed. Cir. 2015) (noting that
ſelopyright registration has identical accoutrements” to
trademark registration). Thus, under the Government’s
approach, every registration system, including the
copyright system, also would be subject to government
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

35

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 Respectfully submitted,
Davip DoNAHUE Davip H. BERNSTEIN
Fross ZELNICK LEHRMAN Counsel of Record

& Zissu, PC. JEREMY F'EIGELSON

4 Times Square. 17" Floor Pooja A. BoisturE
New York, New York 10036 Michal C. McGrecor

(212) 813-5900 JAIME M. FREILICH
Desevoise & PLimpton LLP
CLAUDIA Ray 919 Third Avenue

KIRKLAND K ELIAS 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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385016_0853%3A14. Public record. Not legal advice.