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The Lanham Act sets forth which trademarks may be registered at the Patent and Trademark Office. It contains a number of limitations on registrability. Section 2(a) prohibits among other things the registration of a mark that “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” This provision originally came into force in 1946 with the enactment of the Lanham Act, but the prohibitions it sets forth have been in effect since the late nineteenth century, when the federal government first began to register trademarks.
Recently, these prohibitions have come under constitutional scrutiny. In the 2017 case of Matal v. Tam, involving Simon Tam’s application for the registration of the term THE SLANTS for entertainment services in connection with an Asian-American dance-rock band, the Supreme Court ruled that § 2(a)’s prohibition on “matter which may disparage … persons, living or dead, institutions, beliefs, or national symbols” was unconstitutional under the Free Speech Clause of the First Amendment. Currently before the Court in the case of Iancu v. Brunetti is the question of the constitutionality of the neighboring prohibition on the registration of “immoral … or scandalous matter.” Brunetti seeks registration of the term FUCT for use in connection with apparel.
This Article reports the results of a systematic empirical study of how the United States Patent and Trademark Office (PTO) has applied the immoral-or-scandalous prohibition in practice. For reasons we explain below, we focus on the 3.6 million trademark registration applications filed at the PTO for marks that include text (which we refer to as “word-mark applications”) from 2003 through 2015. The PTO refused to register 1,901 of these marks on the basis that they consisted of immoral-or-scandalous matter, though 140 applications eventually overcame that refusal and 91 proceeded to registration. We show that the PTO applies the immoral-or-scandalous prohibition in an arbitrary and viewpoint-discriminatory matter. Specifically, we show that the PTO routinely refuses registration of applied-for marks on the ground that they are immoral or scandalous under § 2(a) and confusingly similar with an already registered mark under § 2(d). In other words, the PTO routinely states that it cannot register a mark because the mark is immoral or scandalous and in any case because it has already allowed someone else to register the mark on similar goods. Furthermore, the PTO arbitrarily allows some applied-for marks to overcome an immoral-or-scandalous refusal while maintaining that refusal against other similar marks. The PTO also often declines even to issue immoral-or-scandalous refusals to applied-for marks that are closely similar to other marks to which it has issued such refusals. Finally, the PTO uses the § 2(a) immoral-or-scandalous bar to refuse registration of marks whose viewpoint on such practices as drug-taking it finds objectionable.
On the basis of these empirical findings, we conclude that the § 2(a) bar on the registration of immoral-or-scandalous matter violates the Free Speech Clause and is unconstitutional. As a preliminary matter, many of the marks subject to an immoral-or-scandalous refusal are instances of high-value speech. Section 2(a)’s immoral-or-scandalous-marks provision fails to satisfy even the “intermediate scrutiny” applied to commercial speech under Central Hudson Gas & Electric Corp. v. Public Service Commission of New York because it is not narrowly drawn and is arbitrarily applied. Furthermore, the provision is unconstitutionally vague and has been applied in a viewpoint-discriminatory manner.
Part I provides background on Tam and Brunetti. Part II describes the datasets we used for our study. Part III presents various descriptive statistics. Part IV shows from a number of perspectives the degree to which the PTO’s application of the immoral-or-scandalous bar is arbitrary. Part V focuses on how the PTO has engaged in viewpoint discrimination in applying the immoral-or-scandalous bar. Part VI analyzes the implications of our findings under the First Amendment. In conclusion, we briefly raise some thoughts about the use of big data in litigation to show inconsistent application of laws.
Before we proceed, we note (and caution the reader) that many of the trademark applications we discuss contain offensive language. But we think including them, unfiltered, is necessary to report the specifics of these applications to properly convey just how arbitrary and viewpoint-discriminatory the PTO’s enforcement of the immoral-or-scandalous bar has been.
In November 2011, Simon Tam, the founder, bassist, and frontman of The Slants, applied to register the mark THE SLANTS on the Principal Register in connection with “[e]ntertainment in the nature of live performances by a musical band.” The PTO refused registration on the ground that the term was disparaging of Asian persons. On appeal to the U.S. Court of Appeals for the Federal Circuit, Tam explained that he “select[ed] the name ‘The Slants’ to ‘reclaim’ and ‘take ownership’ of Asian stereotypes. The band draws inspiration for its lyrics from childhood slurs and mocking nursery rhymes, and its albums include ‘The Yellow Album’ and ‘Slanted Eyes, Slanted Hearts.’” He argued, among other things, that the § 2(a) prohibition on “matter which may disparage” violated the Free Speech Clause. Reasoning that it was bound by precedent, the Federal Circuit initially rejected his constitutional challenge. Judge Kimberly Moore joined the opinion but added a lengthy opinion of her own under the heading “additional views,” in which she urged the Federal Circuit to reconsider its precedent on the issue. In a subsequent en banc decision, the Federal Circuit adopted Judge Moore’s reasoning and found the § 2(a) disparagement bar to be facially unconstitutional under the Free Speech Clause.
The Supreme Court affirmed by an eight-member court, unanimously finding the provision to be unconstitutional. In a plurality opinion joined by Chief Justice Roberts, Justice Thomas, and Justice Breyer, Justice Alito found that “the disparagement clause” of § 2(a) failed to satisfy even intermediate scrutiny under Central Hudson. This determination allowed him to avoid the question of whether trademarks, as commercial speech, should be subject to either intermediate or strict scrutiny. Justice Alito focused on Central Hudson’s requirement that a restriction of speech be “narrowly drawn.” He explained:
[T]he disparagement clause is not “narrowly drawn” to drive out trademarks that support invidious discrimination. The clause reaches any trademark that disparages any person, group, or institution. It applies to trademarks like the following: “Down with racists,” “Down with sexists,” “Down with homophobes.” It is not an anti-discrimination clause; it is a happy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted.
Justice Alito further expressed a concern that
[t]he commercial market is well stocked with merchandise that disparages prominent figures and groups, and the line between commercial and non-commercial speech is not always clear. If affixing the commercial label permits the suppression of any speech that may lead to political or social “volatility,” free speech would be endangered.
However, Justice Alito did not elaborate on the contours of this concern.
In a concurring opinion joined by Justice Ginsburg, Justice Sotomayor, and Justice Kagan, Justice Kennedy found that § 2(a) constituted viewpoint discrimination and failed strict scrutiny. Justice Kennedy explained: “[A]n applicant may register a positive or benign mark but not a derogatory one. The law thus reflects the Government’s disapproval of a subset of messages it finds offensive. This is the essence of viewpoint discrimination.” As for the commercial speech issue, “[t]o the extent trademarks qualify as commercial speech, they are an example of why that category does not serve as a blanket exemption from the First Amendment’s requirement of viewpoint neutrality.”
Justice Thomas wrote a separate concurrence to register his view that strict scrutiny should be applied “whether or not the speech in question may be characterized as ‘commercial.’”
Erik Brunetti founded the clothing line “fuct” in 1990. In May 2011, two individuals applied to register the mark FUCT in connection with apparel on the PTO’s Principal Register. They subsequently assigned the application to Brunetti. The PTO refused registration on the ground that the mark consisted of “immoral . . . or scandalous matter” under § 2(a). The examining attorney and Trademark Trial and Appeal Board applied the standard test to determine if an applied-for mark is immoral or scandalous. This test “asks whether a substantial composite of the general public would find the mark scandalous, defined 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.”
On appeal, the Federal Circuit found in favor of Brunetti. Writing six months after the Supreme Court decided Tam, Judge Moore ruled that the PTO had not erred in concluding that FUCT is immoral or scandalous but found that the immoral-or-scandalous prohibition violated the Free Speech Clause. Specifically, she held that the prohibition targeted the expressive content of applied-for marks, constituted content-based discrimination, and did not satisfy strict scrutiny. She further held that the immoral-or-scandalous bar failed to pass even intermediate scrutiny under Central Hudson. The Central Hudson analysis of the constitutionality of governmental restrictions on commercial speech has four prongs:
At the outset, we must determine whether the expression is protected by the First Amendment. For commercial speech to come within that provision, it at least must concern lawful activity and not be misleading. Next, we ask whether the asserted governmental interest is substantial. If both inquiries yield positive answers, we must determine whether the regulation directly advances the governmental interest asserted, and whether it is not more extensive than is necessary to serve that interest.
With respect to the second prong of the Central Hudson test, she found that the government’s interest in protecting citizens from profanities was not “substantial.” With respect to the third prong, she found that the immoral-or-scandalous bar did not directly advance this interest because firms can still use applied-for marks in commerce even if their application is refused. Finally, and we think most importantly, Judge Moore also found that the § 2(a) immoral-or-scandalous prohibition failed the fourth prong of the Central Hudson test (“whether [the provision at issue] is not more extensive than is necessary to serve that interest”). She explained:
[N]o matter the government’s interest, it cannot meet the fourth prong of Central Hudson. The PTO’s inconsistent application of the immoral or scandalous provision creates ‘an uncertainty that undermines the likelihood that the provision has been carefully tailored.’ Nearly identical marks have been approved by one examining attorney and rejected as scandalous or immoral by another. . . . Although the language in these marks is offensive, we cannot discern any pattern indicating when the incorporation of an offensive term into a mark will serve as a bar to registration and when it will not.
We used two datasets to analyze how the PTO has applied the § 2(a) immoral-or-scandalous prohibition. The first is the PTO’s Trademark Case Files Dataset, which provides detailed information about all 7.3 million trademark applications for registration on the Principal Register filed from 1982 through 2017. This dataset includes data on applicant and mark characteristics, as well as applications’ prosecution history. Unfortunately, although the dataset indicates if the PTO refused registration of an application, the dataset does not indicate the PTO’s grounds for its decision.
To establish on what basis the PTO refused registration, we used a second dataset of all office actions issued by the PTO from 2003—when the PTO first began to post its trademark office actions online—through 2017. We developed this dataset in connection with a previous study, and have since updated it. This entailed systematically downloading some 3.1 million office actions from the PTO website. We then used keywords and key phrases to autocode the office actions for certain characteristics. Most relevant for our purposes here, we autocoded the office actions for whether the PTO refused registration on the basis that the applied-for mark was immoral or scandalous under § 2(a) or on the basis that the applied-for mark was confusingly similar to an already-registered mark under § 2(d) of the Lanham Act.
Because of the significant computational challenges presented by the analysis of trademark applications for marks consisting only of images, we restrict our analysis here only to word-mark applications. During the period studied, 97% of trademark applications submitted to the PTO were for marks that consisted in whole or part of text. Furthermore, even though we have data through 2017, we study the thirteen-year period from 2003 through 2015 because applications filed after that period may not been fully processed by the end of 2017.
As stated above, of the 3.6 million word-mark applications filed at the PTO for registration on the Principal Register from 2003 through 2015, 1,901 applications were issued refusals to register on the basis that the applied-for mark was immoral or scandalous. For context, Figure 1 shows the number of word-mark applications filed at the PTO by year from 2003 through 2015.
Number of Word-Mark Applications filed at the Patent and Trademark Office for Registration on the Principal Register, 2003-2015
Figure 3 sets forth the international classes of goods or services claimed by all word-mark applications filed from 2003 through 2015 that received a § 2(a) immoral-or-scandalous refusal. As Figure 3 indicates, a very large proportion of applications receiving a § 2(a) immoral-or-scandalous refusal claimed the applied-for mark for use in connection with apparel goods (Class 25). Entertainment services (Class 41) and printed matter (Class 16) also show significant levels of applications receiving a § 2(a) immoral-or-scandalous refusal. Notably, each of these classes involve goods or services that are typically expressive in nature.
International Classes Claimed by Word-Mark Applications Receiving a § 2(a) Immoral-or-Scandalous Refusal, Filing Years 2003-2015
Figure 4 classifies all word-mark applications that received a § 2(a) immoral-or-scandalous refusal from 2003 through 2015 by the type of purported immorality or scandalousness that the applied-for mark primarily involved. In many instances, specific applications involved multiple forms of immorality or scandalousness. Figure 4 classifies each application into the one category of immorality or scandalousness that was most implicated by the applied-for mark. For example, this scheme classifies an application for PHAT FUK in connection with apparel (Class 25) as primarily a vulgar expletive; an application for GOD IS GAY in connection with games and other articles (Class 28) as primarily blasphemous; and an application for WHOREABUSE.COM in connection with online adult-entertainment services (Class 41) as primarily violent. Admittedly, this classification scheme is sometimes highly subjective.
Number of Word-Mark Applications Receiving a § 2(a) Immoral-or-Scandalous Refusal and Number of Such Applications That Overcame That Refusal by Type of Immorality or Scandalousness, Filing Years 2003-2015
We begin with what we believe is the strongest evidence that the PTO applies the immoral-or-scandalous prohibition arbitrarily and inconsistently. While § 2(a) prohibits the registration of a mark that “[c]onsists of or comprises immoral . . . or scandalous matter,” § 2(d) prohibits the registration of a mark that “[c]onsists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office . . . as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” Remarkably, the PTO routinely issues refusals to the same application on the twin bases that the applied-for mark is immoral or scandalous under § 2(a) and that the applied-for mark is confusingly similar to an already-registered mark under § 2(d). In each of these cases, the PTO stated that the mark was immoral or scandalous and thus could not be registered—and that the PTO had already registered a highly similar mark on highly similar goods or services. By its own admission, therefore, the PTO is making a large number of inconsistent applications of the § 2(a) prohibition on the registration of immoral-or-scandalous marks—and often just a short time apart.
Consider some examples of applications for marks that are similar to Brunetti’s mark FUCT. In 2009, the PTO refused to register the mark FUK!T in connection with apparel (Class 25) and the operation of an internet website (Class 42) on the bases that the applied-for mark was immoral or scandalous under § 2(a) and confusingly similar under § 2(d) to the recently-registered mark PHUKIT for apparel (Class 25). Similarly, on June 18, 2013, the PTO registered the mark PHUC for apparel (Class 25). Four days before, on June 14, 2013, the PTO sent out an office action refusing to register the mark P.H.U.C. CANCER (PLEASE HELP US CURE CANCER) in connection with apparel (Class 25) on the bases that the mark was immoral or scandalous and confusingly similar to the about-to-be-registered mark PHUC for apparel. At no time during its registration process did the earlier-filed mark PHUC for apparel receive any immoral-or-scandalous refusal.
The PTO has done this repeatedly—i.e., given different treatment to the same (or nearly same) F-word variant, for use on the same kind of goods. For example, the PTO registered F U 2 for apparel, but barely two years later refused to register F.U. for apparel because it was both immoral and confusingly similar to the registered mark F U 2. Similarly, the PTO registered FVCK STREET WEAR for apparel, but then two years later refused to register FVCKD because it was both scandalous and confusingly similar to an already-registered mark.
There is a wide range of marks for which these twin refusals occur, well beyond those that are variations on Brunetti’s applied-for mark. As illustration, the PTO has asserted in office actions that each of the following marks both contravenes the immoral-or-scandalous-marks provision and is confusingly similar to an already-registered mark:
- MILF SEEKER for online entertainment services, immoral or scandalous and confusingly similar to the recently-registered mark MILFHUNTER for online entertainment services;
- DS DIRTY SANCHEZ for apparel, immoral or scandalous and confusingly similar to the recently-registered mark DIRTY SANCHEZ for prerecorded video and entertainment services;
- HONKEY SOCAL for apparel, immoral or scandalous and confusingly similar to the recently-registered mark HONKEE for apparel;
- MIDDLEFINGER for apparel, immoral or scandalous and confusingly similar to the recently-registered mark JONNY MIDDLEFINGER for bags and apparel;
- BANGBOAT for online adult-entertainment services, immoral or scandalous and confusingly similar to the recently-registered mark BANGBUS for online adult-entertainment services;
- FAT COCK BEER for beer, immoral or scandalous and confusingly similar to the recently-registered mark RED COCK BEER for beer;
- CAMEL TOES for apparel, immoral or scandalous and confusingly similar to the already-registered mark CAMEL TOES for apparel.
These twin refusals also occur with regard to marks containing non-English words. Consider the following examples, both in Spanish:
- PINCHE TAQUERIA (translated by the PTO in its § 2(a) refusal as “fucking taco stand”) for food services (Class 43), immoral or scandalous and confusingly similar to an application filed nine days earlier for PINCHES TACOS for food services (Class 43), which received no immoral-or-scandalous refusal and was subsequently registered;
- UN CABRON POR MI PATRON (translated by the PTO in its § 2(a) refusal as “a prick or motherfucker for my boss”) for apparel, immoral or scandalous and confusingly similar to the recently-registered mark CABRON 49 for apparel.
Appendix 2 sets forth, by filing year, all 114 trademark applications filed from 2003 through 2015 that were refused registration (and failed to publish) on the bases that the applied-for mark was immoral or scandalous under § 2(a) and confusingly similar under § 2(d) to a mark that the PTO had already registered or at least already approved for publication in the Official Gazette. This appendix shows more comprehensively what these examples illustrate: that the PTO has acted inconsistently in issuing immoral-or-scandalous refusals to a wide range of words—from commonly used profanities like FUCK and its variations, to a slew of less widespread words—suggesting that the inconsistent treatment is broad and irremediable.
These inconsistencies cannot be explained away as merely the result of the marks at issue being used in different contexts. This is precisely because in these situations of twin refusals, the PTO asserted that the applied-for mark was immoral or scandalous and contextually similar enough to the already-registered mark that consumer confusion would result. Moreover, the PTO issued these twin refusals against applied-for marks whose application dates were close in time to the publication and registration dates of the earlier-filed marks that the PTO cited as the basis for its confusing similarity refusals under § 2(d). This indicates that changing attitudes cannot explain these inconsistencies.
Sometimes the PTO refuses to register a mark as immoral or scandalous, but then backs down and allows the mark to be published and ultimately registered. A review of these registrations provides further evidence that the PTO is arbitrary and inconsistent in its administration of the immoral-or-scandalous marks provision.
As stated above, of the 1,901 word-mark applications filed from 2003 through 2015 that were refused registration as immoral or scandalous, 140 applications overcame that refusal and 91 proceeded to registration. In many instances, the PTO appears to have arbitrarily accepted dubious reasoning in withdrawing its § 2(a) immoral-or-scandalous refusal—reasoning that the PTO has rejected in similar contexts.
For example, in 2013 the PTO refused to register the mark F’D UP for use in connection with apparel (Class 25) and skateboard parts (Class 28) on the ground that it was immoral or scandalous, reasoning in an office action that “‘F’D UP’ is a common abbreviation for the obscene and vulgar phrase ‘fucked up.’” The applicant responded: “We have defined the f’d up to represent fired up (get fired up)[, and] we are now using the words fired up with our advertising of f’d up products.” Apparently accepting this representation as sufficient to resolve the matter, the PTO issued no further office actions, published the application on September 3, 2013, and registered it on March 11, 2014.
By contrast, in 2010 the PTO refused to register the mark EFFU for use in connection with apparel (Class 25) on the ground that it was immoral or scandalous, reasoning in an office action that “EFF U, . . . the phonetic equivalent of ‘Fu’ meaning ‘fuck you,’” is “scandalous, immoral, and offensive.” The applicant responded that EFFU was not necessarily vulgar and an “example of eff-u not being vulgar would be a television show called EFFIN science.” The PTO maintained its refusal, stating that “EFFU, which is a direct vulgar insult meaning ‘go away’ or ‘go to hell,’ is distinguishable from the term EFFIN.” The applicant subsequently abandoned its application.
In Brunetti itself, Brunetti similarly asserted to the PTO that FUCT is not necessarily vulgar. He argued in response to the PTO’s immoral-or-scandalous refusal that “[a]lthough FUCT is a made-up word, to the extent it has any meaning at all, it is FRIENDS U CAN’T TRUST.” Indeed, Brunetti cited in support of this definition the same source, urbandictionary.com, that the PTO itself cites. But unlike the applicant for the mark F’D UP, Brunetti drew an examiner who was unwilling to accept reasoning of this nature.
Another example: in 2007, the PTO refused to register the mark MILF NEXT DOOR for use in connection with adult-oriented internet audiovisual entertainment (Class 41), explaining that “the acronym MILF means MOTHER I’D LIKE TO F**K.” In response, the applicant explained, inter alia, that “MILF is a title of distinction—a badge of honor—a triumph of the mature woman over a society that fetishizes youth and deems age to be akin to rot. Against this onslaught, this forty-something woman proudly bears the title, and no less importantly craves to retain it.” The PTO initially maintained its decision and issued a final immoral-or-scandalous refusal. But six months later, it inexplicably withdrew that refusal and published the mark for opposition on August 5, 2008. The mark was registered on October 21, 2008.
By contrast, in 2005 the PTO refused under § 2(a) to register the mark MILF.XXX in connection with adult-oriented internet audiovisual entertainment (Class 41), explaining that “the term ‘MILF’ included in the applied-for mark means ‘Mother [or Mom] I’d Like [to] Fuck’ and is thus scandalous because it refers to a lewd or scandalous act.” The applicant responded that “‘MILF’ is susceptible to multiple meanings which may be completely innocuous,” among them “‘Moro Islamic Liberation Front’ (Muslim group in the Philippines),” “‘Man I Like Fragging’ (Counter Strike gaming clan),” and “‘Mother I’d Like to Find’ (polite form; from the movie American Pie). In a subsequent office action, the PTO maintained and made final its refusal, stating that “a substantial composite of the general public would associate the term ‘MILF’ with the offensive phrase ‘mom [or mother] I’d like to fuck,’ rather than one of the possible alternative meanings offered by the applicant.” The PTO asserted that this was particularly true in light of the type of adult entertainment services offered by MILF.XXX, which was precisely the same type of services offered in connection with the mark MILF NEXT DOOR, which was registered two years later. After the PTO’s final refusal, the applicant for MILF.XXX abandoned its application.
These dubious allowances and conflicting refusals are not isolated instances. Appendix 3 sets forth, by filing year, all 140 word-mark applications filed from 2003 through 2015 that were refused registration on the basis that the applied-for mark was immoral or scandalous but that overcame that refusal—a subset of which then proceeded to registration. Appendix 3 reports numerous examples of published and registered word marks that should not have merited publication or registration if the PTO were applying its immoral-or-scandalous review in a non-arbitrary and consistent manner.
For applications filed from 2003 through 2015, the PTO declined to issue an immoral-or-scandalous refusal to and approved for publication a significant number of applications that sought to register a word mark that, based on the PTO’s own § 2(a) refusal practices, was immoral or scandalous regardless of context.
For example, in 2011 the PTO issued an immoral-or-scandalous refusal to an application for the mark HUNG LIKE A MULE .COM YOU HAVE A VOID AND WE CAN FILL IT 7+ in connection with dating services (Class 45), owing to the subpart HUNG LIKE A MULE. The applicant subsequently abandoned its application. Yet in 2015, the PTO registered the mark HUNG LIKE A M.U.L.E. for apparel (Class 25) without any immoral-or-scandalous objection.
Taking another example, in 2007 the PTO issued an immoral-or-scandalous refusal to an application for the mark STFU for apparel (Class 25), stating that “STFU is an acronym for the expletive ‘shut the fuck up.’” The applicant then abandoned its application. By contrast, in 2016, the PTO registered the mark STFU for noise suppressors for firearms (Class 13) without any immoral-or-scandalous objection.
Other examples emerge from applications for marks containing non-English words. In 2008, the PTO issued an immoral-or-scandalous refusal to an application for the mark CAJONES for dietary supplements (Class 5). It cited evidence from urbandictionary.com, among other sources, in support of the conclusion that:
the proposed mark “CAJONES” means “TESTICLES” or “BALLS” and is thus scandalous because it is a commonly used vulgar slang term for a part of the male genitalia. In addition, while the proper spelling of the term is “COJONES” the attached evidence demonstrates that “CAJONES” is a common and often intentional misspelling of the word “COJONES” and has the same overall commercial impression.
The applicant subsequently abandoned the application.
Yet in 2008, the PTO registered the mark CAJONES for party games (Class 28) without any immoral-or-scandalous objection, even though it amended the application record to include the following translation statement: “The foreign wording in the mark translates into English as drawers, and as a slang term for testicles.” Similarly, in 2005 the PTO issued no immoral-or-scandalous refusal to the mark CAJONES for beer (Class 32) and published the mark. In an office action, the PTO had asked the applicant for a translation of the mark, stating: “The following translation statement is suggested: ‘The English translation of CAJONES is drawers.’” (The application subsequently failed to proceed to registration because the applicant failed to submit evidence of actual use of the mark).
As a final example, the PTO has been inconsistent in its treatment of “obscenicons” (defined as “strings of symbols, like %$*$##@, used in comic books to represent obscenities”). It approves some for publication, while refusing to register other very similar obscenicons on the basis that they are immoral or scandalous. For example, in 2009 the PTO issued no immoral-or-scandalous refusal to the mark $#!+ for use in connection with novelty gift items (Class 20) and apparel (Class 25). By contrast, the PTO issued immoral-or-scandalous refusals to the marks NO $#!+ and APE $#!+, both filed only a few years after the application for the mark $#!+.
Again, these are not isolated examples. Appendix 4 sets forth all word-mark applications for words longer than one letter filed from 2003 through 2015 that received no immoral-or-scandalous refusal and proceeded to publication (and often to registration), even though the applications were for word marks that identically matched terms which had elsewhere triggered an immoral-or-scandalous refusal. Perhaps context could explain some of the rejections—i.e., the PTO might have thought some of the word marks listed in Appendix 4 were immoral or scandalous with respect to some goods or services, but not others. But context cannot explain them all. And in any event, the need for the PTO to engage in such difficult contextual judgments helps show the essential arbitrariness of the process of determining that certain uses of a word mark are immoral or scandalous while certain other uses of the same mark are not.
From 2003 through 2015, the PTO issued immoral-or-scandalous refusals to at least 50 applied-for marks for being drug-related (including TIGHT BLUNTS for apparel, WHITE POWDER for apparel, COCAINE for soft drinks and energy drinks, and YOU CAN’T SPELL HEALTHCARE WITHOUT THC for pain-relief medication). In its immoral-or-scandalous refusals, the PTO frequently cites the glorification of drug usage as the basis for the immorality or scandalousness of these marks.
By contrast, during the same time period, the PTO has both not issued an immoral-or-scandalous refusal and has published marks that contain an anti-drug message (such as DOGS AGAINST DRUGS / DOGS AGAINST CRIME for charity services, D.A.R.E. TO RESIST DRUGS AND VIOLENCE for apparel and other goods, and SAY NO TO DRUGS – REALITY IS THE BEST TRIP IN LIFE for printed matter).
The Supreme Court made clear in Matal v. Tam that the law’s regulation of trademarks, specifically legal prohibitions on registration of certain categories of marks, implicates First Amendment interests. Viewed through the lens of the First Amendment, many of the marks subject to an immoral-or-scandalous refusal are instances of high-value speech. Whichever level of scrutiny is applied to analyze the constitutionality of the immoral-or-scandalous-marks provision, the PTO’s inconsistent and arbitrary enforcement of the provision is problematic. The PTO’s enforcement suggests a lack of fit between the purposes of the provision and the provision as enforced. The PTO’s inconsistent and arbitrary enforcement also indicates unconstitutional vagueness.
Although it might be tempting to dismiss many of the marks refused as immoral or scandalous as low-value speech at best, a good number of the mark applications in our study that received a § 2(a) immoral-or-scandalous refusal contain political speech or “speech concerning public affairs.” Such speech “occupies the highest rung of the hierarchy of First Amendment values, and is entitled to special protection.” For example, of the 1,091 word-mark applications in our sample that received an immoral-or-scandalous refusal, 22 of them are a variation of one kind or another on FUCK CANCER (listed in Appendix 5). Others contain political commentary, such as mark applications for OBAMA BIN LADEN for apparel, KATRINA BLOWS BUSH SUCKS for bumper stickers, CRAPITOL HILL for magnets, printed matter, and apparel, among other things, REPUBLICANS ARE LIKE DIAPERS … TIGHT ON THE POOR MAN’S ASS AND ALWAYS FULL OF SHIT for bumper stickers, and FUCK PARIS FUCK LONDON I LOVE NEW YORK for apparel.
Compare these marks with a jacket worn by an individual in public bearing the visible words “Fuck the Draft.” With regard to that behavior, the Supreme Court held in Cohen v. California that criminalization of this individual’s conduct was inconsistent with the First Amendment for forbidding core speech. The Court reasoned that despite the distastefulness of the language used:
Surely the State has no right to cleanse public debate to the point where it is grammatically palatable to the most squeamish among us. Yet no readily ascertainable general principle exists for stopping short of that result were we to affirm the judgment below. For, while the particular four-letter word being litigated here is perhaps more distasteful than most others of its genre, it is nevertheless often true that one man’s vulgarity is another’s lyric. Indeed, we think it is largely because governmental officials cannot make principled distinctions in this area that the Constitution leaves matters of taste and style so largely to the individual.
The Court also emphasized that:
[M]uch linguistic expression serves a dual communicative function: it conveys not only ideas capable of relatively precise, detached explication, but otherwise inexpressible emotions as well. In fact, words are often chosen as much for their emotive as their cognitive force. We cannot sanction the view that the Constitution, while solicitous of the cognitive content of individual speech has little or no regard for that emotive function which practically speaking, may often be the more important element of the overall message sought to be communicated. Indeed, as Mr. Justice Frankfurter has said, “[o]ne of the prerogatives of American citizenship is the right to criticize public men and measures—and that means not only informed and responsible criticism but the freedom to speak foolishly and without moderation.”
Furthermore, many of the mark applications in our study involve sex or sexuality, a category of speech that the Supreme Court has treated as valuable and protected. For example, the Supreme Court has subjected restrictions of sexually-oriented programming on cable television to strict scrutiny. Moreover, in this context, the Supreme Court has expressed doubt whether it is even possible to locate “a principled standard” to separate a parody advertisement with sexual content—about a minister’s first time having sexual relations with his mother in an outhouse—from “more traditional political cartoons.”
First, the PTO’s inconsistency and arbitrariness in enforcing the provision shows that there is insufficient fit between the governmental purpose of the provision and the provision’s enforcement. In defending the constitutionality of the provision, the government has asserted three interests that the provision serves: “protecting the sensibilities of the public,” “the orderly flow of commerce,” and “avoiding any appearance that the government approves of such marks.”
This fit is relevant for both more relaxed and stricter forms of scrutiny.
To the extent that this provision must withstand strict scrutiny, the inconsistency and arbitrariness of the PTO’s enforcement of the immoral-or-scandalous-marks provision bears on the provision’s constitutionality. Specifically, the inconsistency and arbitrariness of the PTO’s enforcement of the provision shows that the provision is substantially underinclusive (by failing to refuse registration to all immoral or scandalous marks) and overinclusive (by refusing registration to marks that are not immoral or scandalous). As the Supreme Court has made clear, when a law “imposes content-based restrictions on speech, those provisions can stand only if they survive strict scrutiny, ‘which requires the Government to prove that the restriction furthers a compelling interest and is narrowly tailored to achieve that interest.’” This standard requires that “when [laws] affect First Amendment rights they must be pursued by means that are neither seriously underinclusive nor seriously overinclusive.” When a law’s enforcement is “riddled with exceptions”—as our data show to be true of the PTO’s enforcement of the immoral-or-scandalous-marks provision—the “law’s underinclusivity raises a red flag.” Such exceptions “diminish the credibility of the government’s rationale for restricting speech in the first place.” Analysis of the immoral-or-scandalous provision pursuant to strict scrutiny therefore suggests a lack of fit between the government’s asserted purposes for the provision and its enforcement of the provision.
The analysis is similar even if the immoral-or-scandalous-marks provision is subject to a more relaxed form of constitutional scrutiny pursuant to Central Hudson—the standard the Federal Circuit applied in Brunetti—as a regulation of commercial speech. Recall that the fourth prong of the Central Hudson inquiry requires a determination whether the law at issue “is not more extensive than necessary to serve [a substantial government] interest.” The Federal Circuit found the immoral-or-scandalous-marks provision constitutionally wanting under this prong, as discussed above.
Our data support a failure of the fourth Central Hudson prong. Specifically, the Supreme Court has made clear that when, as here, “[t]he operation of [a law] is so pierced by exemptions and inconsistencies . . . the Government cannot hope to exonerate it” under the fourth prong of Central Hudson.
The PTO’s inconsistency and arbitrariness in enforcement of the § 2(a) prohibition on the registration of immoral or scandalous marks shows that the provision is also unconstitutionally vague in the context of the First Amendment. The Supreme Court has consistently emphasized that a law that contains “no standard for determining” how to satisfy a requirement of the law is constitutionally problematic. That is because in such an instance, the law “vests virtually complete discretion in the hands of the [government] to determine whether the” legal requirement is met. The Court has concluded that such a law “is unconstitutionally vague on its face because it encourages arbitrary enforcement by failing to describe with sufficient particularity what [one] must do in order to satisfy the statute.”
To the Court, the constitutional “concern [with vagueness] . . . is based upon the ‘potential for arbitrarily suppressing First Amendment liberties.’” Specifically, “the vagueness of . . . a [content-based] regulation [of speech] raises special First Amendment concerns because of its obvious chilling effect on free speech.” For this reason, although unconstitutional vagueness arises in multiple contexts, the Court has made clear that “[i]f . . . [a] law interferes with the right of free speech . . ., a more stringent vagueness test should apply.”
With respect to § 2(a), the inconsistent and arbitrary enforcement by the PTO of the immoral-or-scandalous-marks provision suggests that the provision is unconstitutionally vague, in that the vagueness engenders trademark examiners’ widely inconsistent and arbitrary applications of the provision. In fact, in the related context of § 2(a)’s disparagement provision, the Tam Court acknowledged the “admitted vagueness of the disparagement test.”
Our study shows that the PTO’s enforcement of the immoral-or-scandalous-marks provision is systematically inconsistent and arbitrary. This inconsistency and arbitrariness suggest that the provision violates the First Amendment’s Free Speech clause because of a lack of fit between the provision’s purposes and its enforcement. Furthermore, the provision abets viewpoint discrimination and is unconstitutionally vague.
Beyond the bounds of this Article, but of significant theoretical interest, is the question of how courts should assess claims of lack of fit when those claim are based on “big data,” particularly when a party challenging a statutory provision is able to show exactly how many false positives and false negatives the provision has produced in practice. While previously parties may have relied on handpicked collections of representative anecdotes and courts on vague admonitions against statutes that are “seriously” underinclusive or overinclusive, it is now not difficult to imagine the emergence of “big data Brandeis briefs” that will compel courts to specify precisely how much fit is necessary for a provision to pass constitutional muster.