section 2 refusals are subject to Reed strict scrutiny, Fed. Cir. rules

In re Brunetti, No. 2015-1109  (Fed. Cir. Dec. 15, 2017)
Brunetti wanted to register FUCT; the TTAB affirmed a
refusal to register on scandalousness grounds. 
The Federal Circuit here deals the inevitable deathblow to
scandalousness as a registration bar, but on broader grounds than I expected.  Instead of holding that scandalousness is
obviously viewpoint-based (because it focuses on that which offends the
majority, not others—even if you thought as I did that disparagement is not
viewpoint-based, scandalousness doesn’t protect everyone equally), the court merely
expresses its suspicion that the bar is viewpoint-based, but then holds that
the provision is (1) content-based and (2) insufficiently justified.  So, which of the other §2 bars can survive
strict scrutiny, or even intermediate scrutiny?
The court applied Reed
v. Town of Gilbert
’s definition of content-based laws: “a law applies to
particular speech because of the topic discussed or the idea or message
expressed.” “Content- based statutes are presumptively invalid” and must
survive strict scrutiny.  But the
government didn’t argue that scandalousness survived strict scrutiny.  Instead, it made the already-rejected
arguments that trademark registration is either a government subsidy program or
a limited public forum.  (Only some
Justices in Tam reached these issues,
but the Federal Circuit already rejected those arguments.)  The Federal Circuit characterized the bar on
registration as a “restrain[t]” on the expression of private speech in
commerce, thus at least triggering unconstitutional conditions scrutiny.
The court then applied strict scrutiny, not Central Hudson, because the scandalousness
bar targeted the expressive content of speech, not just source identification
(which the court apparently equated with 
speech that does “no more than propose a commercial transaction,” though of course that’s not true in many cases).  The court thinks this distinction will protect most of
the remaining parts of §2, not to mention infringement law generally.  I am not
so sure, though I am sure that dilution looks even worse now.  The court specifically mentions the “merely
descriptive” and “geographically descriptive” bars as targeting
source-identifying information, which … seems backwards.  Those bars target information that doesn’t identify source.  If denying registration deters use of this
(presumptively truthful) information, as the court already held when it treated
denial as a restraint on expression, then those bars need further analysis.
The court then went on to hold that the scandalousness bar
also didn’t survive intermediate scrutiny: “the State must show at least that
the statute directly advances a substantial governmental interest and that the
measure is drawn to achieve that interest,” though it need not be the least
restrictive means. There was no substantial governmental interest in “promoting
certain trademarks over others” (*cough*dilution*cough*), or in protecting the
public from offensive marks.  [In passing
the court accidentally explains why disparagement was content-based but
viewpoint-neutral under prior precedents, pointing out that many cases cited in
Tam didn’t involve viewpoint-based
restrictions, such as Hustler v. Falwell,
where the speech was offensive but didn’t articulate particular “beliefs,
ideas, or perspectives.”]  There was also
no substantial interest in protecting the public from scandalousness and profanities
under FCC v. Pacifica Foundation, 438 U.S. 726 (1978), which depended on the
fact that radio broadcasting has “a uniquely pervasive presence in the lives of
all Americans” and is “uniquely accessible to children, even those too  young to read,” confronting Americans “in the
privacy ofthe home, where the individual’s right to be left alone  plainly outweighs the First Amendment rights
of an  intruder.”  “A trademark is not foisted upon listeners by
virtue of its being registered. Nor does registration make a scandalous mark
more accessible to children.” 
Anyway, even if there were a substantial interest in
protecting the public from scandalous or immoral marks, denial of registration
wouldn’t directly advance the government’s interest, because §2(a) doesn’t
prevent the use of marks, just bars their registration.  [Hey, did you notice that this argument
applies to the other §2 bars, including descriptiveness, deceptiveness, and the
others?  The only one that might survive
is §(d) confusion, because of B&B v.
Hargis
—because the TTAB’s determination could in some circumstances be used
to stop the mark’s use, perhaps that directly advances the government’s
interest.  But what if, as the Court
indicated in B&B would regularly
be the case, the defendant’s use is relevantly different from that laid out in
the rejected application?  In that case,
the rejection wouldn’t prevent the use and wouldn’t directly further the
government’s interest in avoiding confusion.]
Finally, the scandalousness bar wasn’t carefully tailored,
given the PTO’s inconsistent application of the bar and the TTAB’s own
acknowledgement that scandalousness is “vague and subjective.”  [I have some bad news about the difference
between descriptive and suggestive marks, and about §2(d) confusion
analysis.]  Not only did this
inconsistent treatment create vagueness problems, it generated “uncertainty
[that] undermines the likelihood that the [provision] has been carefully
tailored.”  Even if there’s a set of
trademarks “whose offensiveness cannot be reasonably questioned,” the disparate
and unpredictable application of the principles of scandalousness makes the bar
flunk the narrow tailoring requirement of Central
Hudson
.

Judge Dyk’s concurrence would have limited the invalidation
of scandalousness to marks that weren’t obscene, but the majority found that no
reasonable definition of the statutory terms could convert them into a bar on
“obscene” marks.

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