United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: ERIK BRUNETTI,

Appellant

______________________ 

2015-1109

______________________ 

Appeal from the United States Patent and Trademark 

Office, Trademark Trial and Appeal Board in No. 

85310960.

______________________ 

Decided: December 15, 2017

______________________ 

JOHN R. SOMMER, Irvine, CA, argued for appellant. 

JOSHUA MARC SALZMAN, Appellate Staff, Civil Division, United States Department of Justice, Washington, 

DC, argued for appellee Joseph Matal. Also represented 

by DANIEL TENNY, MARK R. FREEMAN, BENJAMIN C. MIZER;

NATHAN K. KELLEY, THOMAS L. CASAGRANDE, CHRISTINA 

HIEBER, MARY BETH WALKER, MOLLY R. SILFEN, THOMAS 

W. KRAUSE, Office of the Solicitor, United States Patent 

and Trademark Office, Alexandria, VA.

______________________ 

Before DYK, MOORE, and STOLL, Circuit Judges.

Opinion for the court filed by Circuit Judge MOORE. 

Concurring opinion filed by Circuit Judge DYK. 
2 IN RE: BRUNETTI

MOORE, Circuit Judge. 

Erik Brunetti appeals from the decision of the Trademark Trial and Appeal Board (“Board”) affirming the 

examining attorney’s refusal to register the mark FUCT

because it comprises immoral or scandalous matter under 

15 U.S.C. § 1052(a) (“§ 2(a)”). We hold substantial evidence supports the Board’s findings and it did not err 

concluding the mark comprises immoral or scandalous 

matter. We conclude, however, that § 2(a)’s bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech. We therefore reverse the 

Board’s holding that Mr. Brunetti’s mark is unregistrable. 

BACKGROUND

I. Section 2(a)’s Bar on Registration of Immoral or 

Scandalous Marks

Section 2(a) of the Lanham Act provides that the Patent and Trademark Office (“PTO”) may refuse to register 

a trademark 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 . . . .” 15 U.S.C. 

§ 1052(a). While § 2(a) identifies “immoral” and “scandalous” subject matter as separate bases to refuse to register 

a trademark—and are provisions separated by the “deceptive” provision—the PTO generally applies the bar on 

immoral or scandalous marks as a unitary provision (“the 

immoral or scandalous provision”). See TMEP § 1203.01 

(“Although the words ‘immoral’ and ‘scandalous’ may have 

somewhat different connotations, case law has included 

immoral matter in the same category as scandalous 

matter.”); In re McGinley, 660 F.2d 481, 485 n.6 (CCPA 

1981) (“Because of our holding, infra, that appellant’s 

mark is ‘scandalous,’ it is unnecessary to consider whether appellant’s mark is ‘immoral.’ We note the dearth of 

reported trademark decisions in which the term ‘immoral’ 
IN RE: BRUNETTI 3

has been directly applied.”); see also Anne Gilson LaLonde 

& Jerome 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)). The bar on immoral or 

scandalous marks was first codified in 1905, see Act of 

Feb. 20, 1905, ch. 592, § 5(a), 33 Stat. 724, 725, and reenacted in the Lanham Act in 1946, Pub. L. 79-489, § 2(a), 

60 Stat. 427, 428 (codified at 15 U.S.C. § 1052(a)). 

To determine whether a mark should be disqualified 

under § 2(a), the PTO 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.” In re Fox, 702 F.3d 633, 635 (Fed. 

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

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

Alternatively, “the PTO may prove scandalousness by 

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

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

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

[and] morally crude . . . .” See McGinley, 660 F.2d at 486 

(quoting In re Runsdorf, 171 U.S.P.Q. 443, 443–44 

(1971)). The PTO makes a 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) (quoting Mavety, 33 F.3d at 1371). 

Because the scandalousness determination is made in 

the context of contemporary attitudes, the concept of what 

is actually immoral or scandalous changes over time. 

Early cases often, but not always, focused on religious 
4 IN RE: BRUNETTI

words or symbols. See, e.g., In re Riverbank Canning Co., 

95 F.2d 327, 329 (CCPA 1938) (MADONNA for wine); Ex 

parte Martha Maid Mfg. Co., 37 U.S.P.Q. 156 (Comm’r 

Pat. 1938) (QUEEN MARY for women’s underwear); Ex 

Parte Summit Brass & Bronze Works, Inc., 59 U.S.P.Q. 22 

(Comm’r Pat. 1943) (AGNUS DEI for safes); In re P. J. 

Valckenberg, Gmbh, 122 U.S.P.Q. 334 (T.T.A.B. 1959) 

(MADONNA for wine); In re Reemtsma Cigarettenfabriken G.M.B.H., 122 U.S.P.Q. 339 (T.T.A.B. 1959) 

(SENUSSI (a Muslim sect that forbids smoking) for 

cigarettes); In re Sociedade Agricola E. Comerical Dos 

Vinhos Messias, S.A.R.L., 159 U.S.P.Q. 275 (T.T.A.B. 

1968) (MESSIAS for wine and brandy). In later cases, the 

PTO rejected a wider variety of marks as scandalous. See, 

e.g., Runsdorf, 171 U.S.P.Q. at 443 (BUBBY TRAP for 

brassieres); McGinley, 660 F.2d at 482 (mark consisting of 

“a photograph of a nude man and woman kissing and 

embracing in a manner appearing to expose the male 

genitalia” for a swingers newsletter); In re Tinseltown, 

Inc., 212 U.S.P.Q. 863 (T.T.A.B. 1981) (BULLSHIT on 

handbags, purses, and other personal accessories); Greyhound Corp. v. Both Worlds, Inc., 6 U.S.P.Q.2d 1635 

(T.T.A.B. 1988) (mark depicting a defecating dog); Mavety, 

33 F.3d 1367 (BLACK TAIL for adult entertainment 

magazines). 

II. Facts of This Case

Mr. Brunetti owns the clothing brand “fuct,” which he 

founded in 1990. In 2011, two individuals filed an intentto-use application (No. 85/310,960) for the mark FUCT for 

various items of apparel. The original applicants assigned the application to Mr. Brunetti, who amended it to 

allege use of the mark. The examining attorney refused 

to register the mark under § 2(a) of the Lanham Act, 

finding it comprised immoral or scandalous matter. The 

examining attorney reasoned that FUCT is the past tense 

of the verb “fuck,” a vulgar word, and is therefore scandalous. J.A. 203. 
IN RE: BRUNETTI 5

Mr. Brunetti requested reconsideration and appealed 

to the Board. The examining attorney denied reconsideration, and the Board affirmed. In its decision, the Board 

stated the dictionary definitions in the record uniformly 

characterize the word “fuck” as offensive, profane, or 

vulgar. The Board noted that the word “fuct” is defined 

by Urban Dictionary as the past tense of the verb “fuck” 

and pronounced the same as the word “fucked,” and 

therefore found it is “recognized as a slang and literal 

equivalent of the word ‘fucked,’” with “the same vulgar 

meaning.” J.A. 6–7 & n.6. Based on the examining 

attorney’s Google Images search results, the Board stated

Mr. Brunetti used the mark in the context of “strong, and 

often explicit, sexual imagery that objectifies women and 

offers degrading examples of extreme misogyny,” with a 

theme “of extreme nihilism—displaying an unending 

succession of anti-social imagery of executions, despair, 

violent and bloody scenes including dismemberment, 

hellacious or apocalyptic events, and dozens of examples 

of other imagery lacking in taste.” J.A. 8–9. The Board 

explained that Mr. Brunetti’s use of the mark “will be 

perceived by his targeted market segment as the phonetic 

equivalent of the wor[d] ‘fucked.’” J.A. 9. In light of the 

record, it found Mr. Brunetti’s assertion that the mark 

“was chosen as an invented or coined term stretches 

credulity.” Id. It concluded that the mark is vulgar and 

therefore unregistrable under § 2(a) of the Lanham Act. 

Mr. Brunetti appealed. We have jurisdiction under 28 

U.S.C. § 1295(a)(4).

DISCUSSION

Mr. Brunetti argues substantial evidence does not 

support the Board’s finding the mark FUCT is vulgar

under § 2(a) of the Lanham Act. He argues even if the 

mark is vulgar, § 2(a) does not expressly prohibit the 

registration of vulgar marks and a mark should be approved for registration when there is doubt as to its 

meaning, as he alleges there is here. Alternatively, 
6 IN RE: BRUNETTI

Mr. Brunetti challenges the constitutionality of § 2(a)’s

bar on immoral or scandalous marks. 

I. The Mark FUCT is Vulgar and Therefore Scandalous

The determination that a mark is scandalous is a conclusion of law based upon underlying factual inquiries. 

Fox, 702 F.3d at 637. We review the Board’s factual 

findings for substantial evidence and its ultimate conclusion de novo. Id. Substantial evidence is “more than a 

mere scintilla” and “such relevant evidence as a reasonable mind might accept as adequate” to support a conclusion. Consol. Edison v. NLRB, 305 U.S. 197, 229 (1938).

It is undisputed that the word “fuck” is vulgar. Dictionaries in the record characterize the word as “taboo,” 

“one of the most offensive” English words, “almost universally considered vulgar,” and an “extremely offensive 

expression.” J.A. 5–6; J.A. 206 (Collins Online Dictionary); J.A. 209 (Vocabulary.com); J.A. 211 (Wikipedia.com); 

J.A. 351 (MacMillan Dictionary). Mr. Brunetti argues 

that the vulgarity of “fuck” is irrelevant to whether the 

mark FUCT is vulgar. We do not agree.

Substantial evidence supports the Board’s finding 

that “fuct” is a “phonetic twin” of “fucked,” the past tense 

of the word “fuck.” J.A. 10. Urban Dictionary defines 

“fuct” as the “past tense of the verb fuck.” J.A. 83. MacMillan Dictionary indicates that the word “fucked” is 

pronounced phonetically as /fʌkt/, which the Board found 

sounds like “fukt” or “fuct.” J.A. 6 & n.6. This evidence 

linking the two terms is sufficient to render the vulgarity 

of the word “fuck” relevant to the vulgarity of 

Mr. Brunetti’s mark.

Evidence of the use of Mr. Brunetti’s mark in the 

marketplace further buttresses the Board’s finding of a 

link between the mark and the word “fuck.” The Board 

found the term “fuct” is used on products containing 

sexual imagery and that consumers perceive the mark as 
IN RE: BRUNETTI 7

having “an unmistakable aura of negative sexual connotations.” J.A. 9. One T-shirt—captioned the “FUCT Orgy” 

shirt—depicts a group sex scene. J.A. 346. Another Tshirt contains the word “FUCK” in yellow letters, with a 

“T” superimposed over the “K” such that the word FUCK 

is still visible. J.A. 325. A third T-shirt has the brand 

name FUCT depicted above the slogan “1970 smokin dope 

& fucking in the streets.” J.A. 312. Because one meaning 

of “fuck” is “to have sex with someone,” the placement of 

the mark on products containing sexual imagery makes it 

more likely that the mark will be perceived as the phonetic equivalent of the word “fucked.” J.A. 9.

Mr. Brunetti challenges the evidence on which the

Board relied in making the vulgarity finding. He argues 

that Urban Dictionary is not a standard dictionary edited 

by lexicographers and the author of the definition cited by 

the Board lacks lexicographic expertise. He argues that 

the Board did not consider his current line of products, 

which he provided to the examining attorney, but instead 

relied on a random collection of outdated products collected from Google Images. He argues the Board should not 

have considered these images because they lack foundation, are inadmissible hearsay, and are irrelevant to the 

current perception of the mark in the marketplace. He 

also argues that the majority of the marked products 

contain no sexual imagery.

Mr. Brunetti’s arguments have no merit. For ex parte 

proceedings, the Board permits the examining attorney to 

consider materials from the Internet, having adopted a 

“somewhat more permissive stance with respect to the 

admissibility and probative value of evidence.” TBMP

§§ 1208, 1208.03. The pedigree of the author of a definition may affect the weight that evidence is given but does 

not render the definition irrelevant. Similarly, the ages of 

the images collected by the examining attorney may affect 

evidentiary weight, not relevance.
8 IN RE: BRUNETTI

Mr. Brunetti also argues that the Board ignored probative evidence that the mark is not vulgar. He argues 

that both he and the owner of a high-end clothing store

declared that the mark was not vulgar. He argues that 

the meaning of the term “fuct” is ambiguous, but that to 

the extent it has any meaning, it is “Friends yoU Can’t 

Trust.” See Mavety, 33 F.3d at 1374 (“commend[ing] the 

practice” of erring on the side of publication when marks 

are not clearly scandalous). He claims that in over twenty 

years of operation, he received only a single complaint 

about his brand name and the brand is mass-distributed 

by “high-end national retailers” like Urban Outfitters. 

Appellant’s Br. 8. Finally, he argues that two of Urban 

Dictionary’s seven definitions of the term “fuct” refer to 

his brand name, while only one definition is vulgar.

Mr. Brunetti’s proffered evidence does not change our 

conclusion that substantial evidence supports the Board’s 

findings. The Board explicitly considered Mr. Brunetti’s 

declaration and found it “stretche[d] credulity” that “fuct” 

was chosen as an invented or coined term for “Friends 

yoU Can’t Trust,” given the contradictory record evidence. 

J.A. 9–10. Mr. Brunetti’s unverifiable claim about the 

number of customer complaints may demonstrate that the 

mark is not offensive to a certain segment of the market. 

That does not satisfy his burden on appeal, however, to 

establish that the Board lacked substantial evidence for 

its determination that a “substantial composite” of the 

American public would find the mark vulgar. And the 

fact that the Board could have relied on one of the other 

five definitions of the term “fuct” on Urban Dictionary—a 

website to which anyone can anonymously submit definitions—does not demonstrate that the Board’s reliance on 

that website is not substantial evidence. The Board 

reasonably focused on the highest rated definition, suggesting that it is more common or accurate than the 

alternative, non-vulgar definitions.
IN RE: BRUNETTI 9

Mr. Brunetti argues that even if FUCT is vulgar, 

§ 2(a) does not prohibit the registration of vulgar marks—

only “immoral” or “scandalous” marks. He argues that to 

be immoral or scandalous, a mark must be more than 

merely vulgar. He argues that extending § 2(a) to vulgar 

marks is contrary to the plain language of the statute.

We do not agree. We have previously held “the PTO 

may prove scandalousness by establishing that a mark is 

‘vulgar.’” Fox, 702 F.3d at 635; see also Boulevard Entm’t, 

334 F.3d at 1340 (“A showing that a mark is vulgar is 

sufficient to establish that it ‘consists of or comprises 

immoral . . . or scandalous matter’ within the meaning of 

section 1052(a).”). We are bound by these holdings.

Even if we could overrule our prior holding that a 

showing of vulgarity is sufficient to establish that a mark 

“consists of or comprises immoral . . . or scandalous matter,” we see no justification for doing so in light of the 

evidence of record. At the time of the passage of the 

Lanham Act, dictionaries defined “scandalous” as “shocking to the sense of truth, decency, or propriety,” “[g]iving 

offense to the conscience or moral feelings,” or “calling out 

[for] condemnation.” McGinley, 660 F.2d at 485–86 (citing 

Webster’s New International Dictionary (2d ed. 1942); 

Funk & Wagnalls New Standard Dictionary (1945)). 

Other definitions characterize scandalous as “disgraceful,” 

“offensive,” or “disreputable.” Id. (citing Webster’s New 

International Dictionary (2d ed. 1942); Funk & Wagnalls 

New Standard Dictionary (1945)). We see no definition of 

scandalous that, in light of the PTO’s fact findings, would 

exempt Mr. Brunetti’s mark.

We see no merit in Mr. Brunetti’s arguments relating 

to whether the mark is scandalous and therefore prohibited registration under § 2(a). Substantial evidence supports the Board’s finding the mark FUCT is vulgar and 

therefore the Board did not err in concluding the mark is 

not registrable under § 2(a). 
10 IN RE: BRUNETTI

II. Section 2(a)’s Bar on Immoral or Scandalous Marks is 

Unconstitutional Under the First Amendment 

When Mr. Brunetti filed his appeal, his constitutional 

argument was foreclosed by binding precedent. In 

McGinley, our predecessor court held the refusal to register a mark under § 2(a) does not bar the applicant from 

using the mark, and therefore does not implicate the First 

Amendment. 660 F.2d at 484. Commentators heavily 

criticized McGinley and our continued reliance on it, 

particularly in light of the many changes to First 

Amendment jurisprudence over the last thirty years. In 

re Tam, 808 F.3d 1321, 1333–34 & n.4 (Fed. Cir. 2015) (en 

banc). We reconsidered McGinley en banc in Tam, which 

held the disparagement provision of § 2(a) unconstitutional under the First Amendment because it discriminated on the basis of content, message, and viewpoint. Id. 

at 1334–37, 1358. We held that, although trademarks 

serve a commercial purpose as source identifiers in the 

marketplace, the disparagement provision of § 2(a) related to the expressive character of marks, not their commercial purpose. Id. at 1337–39. As either a contentbased or viewpoint-based regulation of expressive speech, 

the disparagement provision was subject to strict scrutiny. Id. at 1339. It was undisputed that the measure did 

not survive such scrutiny. Id. 

We rejected the government’s arguments that § 2(a) 

did not implicate the First Amendment, holding instead 

that the PTO’s denial of marks had a chilling effect on 

speech. Id. at 1339–45. We also rejected the government’s arguments that trademark registration was government speech, id. at 1345–48, and that trademark 

registration was a federal subsidy, id. at 1348–55. Finally, we held the disparagement provision did not survive 

even the lesser scrutiny afforded to commercial speech 

under Central Hudson Gas & Electric Corp. v. Public

Service Commission, 447 U.S. 557, 563 (1980), because 

the government had put forth no substantial interests 
IN RE: BRUNETTI 11

justifying the regulation of speech. Tam, 808 F.3d 

at 1355–58. 

The en banc court noted that § 2(a) contains a hodgepodge of differing prohibitions on registration, and as 

such, the holding in Tam was limited to § 2(a)’s disparagement provision. Id. at 1330; see also id. at 1330 n.1. 

However, the court left open whether other portions of § 2 

may also be unconstitutional, and held that McGinley was 

overruled insofar as it could prevent a future panel from 

reconsidering the constitutionality of other portions of § 2. 

Id. at 1330 n.1. 

Following the issuance of our en banc decision in Tam, 

we requested additional briefing from both parties in this 

case on “the impact of the Tam decision on Mr. Brunetti’s 

case, and in particular whether there is any basis for 

treating immoral and scandalous marks differently than 

disparaging marks.” In re Brunetti, No. 15-1109, Docket 

No. 51 (Fed. Cir. Dec. 22, 2015). Both parties filed letter 

briefs. The government stated that “given the breadth of 

the Court’s Tam decision and in view of the totality of the

Court’s reasoning,” there is no reasonable basis for treating immoral or scandalous marks differently than disparaging marks. Gov’t Letter Br. 2, In re Brunetti, No. 15-

1109, Docket No. 52 (Fed. Cir. Jan. 21, 2016). It maintained, however, that if the Solicitor General sought 

Supreme Court review of our en banc decision in Tam, 

“the government may argue that, under reasoning less 

sweeping than that adopted in Tam, the bar on registration of scandalous and immoral marks would survive even 

if the bar on registration of disparaging marks were held 

invalid.” Id. at 4. The Supreme Court subsequently 

granted certiorari. Lee v. Tam, 137 S. Ct. 30 (2016).

On June 19, 2017, the Supreme Court unanimously 

affirmed our en banc decision in Tam. Matal v. Tam, 

137 S. Ct. 1744 (2017). The Court held that trademarks 

are private, not government, speech. Id. at 1757–61. 
12 IN RE: BRUNETTI

Pursuant to two opinions authored by Justice Alito and 

Justice Kennedy, it concluded that § 2(a)’s bar on the 

registration of disparaging marks discriminated based on 

viewpoint. Id. at 1763 (Alito, J.); id. at 1765 (Kennedy, 

J.). The Court explained the disparagement provision 

“offends a bedrock First Amendment principle: Speech 

may not be banned on the ground that it expresses ideas 

that offend.” Id. at 1751 (Alito, J.); accord id. at 1766 

(Kennedy, J.). The plurality opinion, authored by Justice 

Alito and joined by Chief Justice Roberts, Justice Thomas, 

and Justice Breyer, further concluded that the constitutionality of the disparagement provision could not be 

sustained by analyzing trademark registration as either a 

federal subsidy or a federal program. Id. at 1760–63

(Alito, J.). The remaining four participating Justices

opined, in a concurring opinion authored by Justice Kennedy, that “the viewpoint discrimination rationale renders 

unnecessary any extended treatment of other questions 

raised by the parties.” Id. at 1765 (Kennedy, J.). 

Both opinions held the disparagement provision unconstitutionally restricted free speech, left open was “the 

question of whether Central Hudson provides the appropriate test for deciding free speech challenges to provisions of the Lanham Act.” Id. at 1764 n.17 (Alito, J.); see 

also id. at 1767 (Kennedy, J.). Justice Alito’s opinion 

concluded the disparagement provision failed even the 

intermediate test under Central Hudson because the 

prohibition was not narrowly drawn to a substantial 

government interest. Id. at 1764–65 (Alito, J.). Justice

Kennedy’s opinion concluded that, because the disparagement provision discriminates based on viewpoint, it 

was subject to heightened scrutiny, which it did not 

withstand. Id. at 1767–68 (Kennedy, J.). Neither opinion 

reached the constitutionality of other provisions of § 2 of

the Lanham Act. See, e.g., id. at 1768 (Kennedy, J.). 

Following the issuance of the Supreme Court’s decision 

in Tam, we requested additional briefing from the parties 
IN RE: BRUNETTI 13

regarding the impact of the Supreme Court’s decision on 

Mr. Brunetti’s case. In re Brunetti, No. 15-1109, Docket 

No. 58 (Fed. Cir. June 20, 2017). Both parties submitted

letter briefs and we heard oral argument on August 29, 

2017. The government contends Tam does not resolve the 

constitutionality of § 2(a)’s bar on registering immoral or 

scandalous marks because the disparagement provision 

implicates viewpoint discrimination, whereas the immoral 

or scandalous provision is viewpoint neutral. Gov’t Letter 

Br. 6–9, In re Brunetti, No. 15-1109, Docket No. 60 (Fed. 

Cir. July 20, 2017). 

While we question the viewpoint neutrality of the 

immoral or scandalous provision, we need not resolve that

issue. Independent of whether the immoral or scandalous 

provision is viewpoint discriminatory, we conclude the 

provision impermissibly discriminates based on content in 

violation of the First Amendment. 

A. Section 2(a)’s Bar on Registering Immoral or 

Scandalous Marks is an Unconstitutional Content-Based 

Restriction on Speech

The government restricts speech based on content

when “a law applies to particular speech because of the 

topic discussed or the idea or message expressed.” Reed v. 

Town of Gilbert, 135 S. Ct. 2218, 2227 (2015). Contentbased statutes are presumptively invalid. RAV v. City of 

St. Paul, Minn., 505 U.S. 377, 382 (1992). To survive, 

such statutes must withstand strict scrutiny review, 

which requires the government to “prove that the restriction furthers a compelling interest and is narrowly 

tailored to achieve that interest.” Reed, 135 S. Ct. at 2231 

(quoting Ariz. Free Enter. Club’s Freedom Club PAC v.

Bennett, 564 U.S. 721, 734 (2011)); United States v. Playboy Entm’t Grp., Inc., 529 U.S. 803, 813 (2000) (“If a 

statute regulates speech based on its content, it must be 

narrowly tailored to promote a compelling Government 

interest. If a less restrictive alternative would serve the 
14 IN RE: BRUNETTI

Government’s purpose, the legislature must use that 

alternative.”). Strict scrutiny applies whether a government statute bans or merely burdens protected speech. 

See Playboy, 529 U.S. at 812 (“The Government’s contentbased burdens must satisfy the same rigorous scrutiny as 

its content-based bans.”). 

The government concedes that § 2(a)’s bar on registering immoral or scandalous marks is a content-based 

restriction on speech. Oral Arg. at 11:57–12:05. And the 

government does not assert that the immoral or scandalous provision survives strict scrutiny review. Instead, the 

government contends § 2(a)’s content-based bar on registering immoral or scandalous marks does not implicate 

the First Amendment because trademark registration is 

either a government subsidy program or limited public 

forum. Gov’t Letter Br. 14, In re Brunetti, No. 15-1109, 

Docket No. 60 (Fed. Cir. July 20, 2017); Oral Arg. 

at 12:06–21, 18:15–39. Alternatively, the government 

argues trademarks are commercial speech implicating 

only the intermediate level of scrutiny set forth in Central 

Hudson. Gov’t Letter Br. 15, In re Brunetti, No. 15-1109, 

Docket No. 60 (Fed. Cir. July 20, 2017); Oral Arg. 

at 35:05–17. Under a less exacting degree of scrutiny, the 

government argues the immoral or scandalous provision

is an appropriate content-based restriction tailored to 

substantial government interests. We consider these 

arguments in turn.

1. Trademark Registration is Not a Government Subsidy 

Program

The Spending Clause of the U.S. Constitution “provides Congress broad discretion to tax and spend for the 

‘general Welfare,’ including by funding particular state or

private programs or activities.” Agency for Int’l Dev. v. 

All. for Open Soc’y Int’l, Inc., 133 S. Ct. 2321, 2327–28 

(2013); U.S. Const. art. I, § 8, cl. 1. Within this discretion 

is the authority to attach certain conditions to the use of 
IN RE: BRUNETTI 15

its funds “to ensure they are used in the manner Congress 

intends.” Id. at 2328; see also Rust v. Sullivan, 500 U.S. 

173, 198 (1991) (“The condition that federal funds will be 

used only to further the purposes of a grant does not 

violate constitutional rights.”). Other governmentimposed conditions may impermissibly impinge the First 

Amendment rights of fund recipients. Pursuant to the 

long-established unconstitutional conditions doctrine, the 

government may not restrict a recipient’s speech simply 

because the government provides him a benefit: 

[E]ven though a person has no “right” to a valuable governmental benefit and even though the 

government may deny him the benefit for any 

number of reasons, there are some reasons upon 

which the government may not rely. It may not 

deny a benefit to a person on a basis that infringes

his constitutionally protected interests—

especially, his interest in freedom of speech.

Perry v. Sindermann, 408 U.S. 593, 597 (1972); accord Bd. 

of Cty. Comm’rs v. Umbehr, 518 U.S. 668, 674 (1996) 

(“[T]he threat of the loss of [a valuable financial benefit] 

in retaliation for speech may chill speech on matters of 

public concern . . . .”). Conditions attached to government 

programs may unconstitutionally restrict First Amendment rights even if the program involves Congress’ authority to direct spending under the Spending Clause. 

See, e.g., Agency for Int’l Dev., 133 S. Ct. at 2330–31 

(holding Congress could not restrict appropriations aimed 

at combating the spread of HIV/AIDS to only organizations that affirmatively opposed prostitution and sex 

trafficking); FCC v. League of Women Voters, 468 U.S. 

364, 399–400 (1984) (rejecting the government’s argument 

that Congress’ spending power justified conditioning 

funding to public broadcasters on their refraining from 

editorializing). The constitutional line, while “hardly 

clear,” rests between “conditions that define the limits of 

the government spending program—those that specify the 
16 IN RE: BRUNETTI

activities Congress wants to subsidize—and conditions 

that seek to leverage funding to regulate speech outside

the contours of the program itself.” Agency for Int’l Dev.,

133 S. Ct. at 2328. 

The government argues, pursuant to the government 

subsidy framework articulated in Agency for International 

Development, that § 2(a)’s bar on registering immoral or 

scandalous marks is simply a reasonable exercise of its 

spending power, in which the bar on registration is a 

constitutional condition defining the limits of trademark 

registration. Our court rejected the applicability of this

analysis to trademark registration, 9–3, in our en banc 

decision in Tam.1 808 F.3d at 1348–55. The four Justices 

who reached the issue in Tam likewise held the government subsidy framework does not apply to trademark 

registration. 137 S. Ct. at 1761 (Alito, J.). Justice Alito

explained in his plurality opinion that while the constitutional framework articulated in Agency for International 

Development “‘is not always self-evident,’ no difficult 

question is presented here.” Id. (quoting 133 S. Ct. 

at 2330 (alterations omitted)).

1 The government maintains that our en banc decision in Tam is not binding on this panel in light of the 

Supreme Court’s decision in Tam. Oral Arg. at 12:23–

13:36, 15:43–54. We question the force of this assertion 

because the Supreme Court did not reverse or otherwise 

cast doubt on the continuing validity of our government 

subsidy analysis and other aspects of our decision in Tam. 

See Chen v. Allstate Ins. Co., 819 F.3d 1136, 1138 n.1 (9th 

Cir. 2016); Balintulo v. Ford Motor Co., 796 F.3d 160, 166 

n.28 (2d Cir. 2015). Because we independently reach the 

same conclusion as the en banc court, we need not decide 

whether that holding continues to bind future panel 

decisions in this circuit.

 
IN RE: BRUNETTI 17

Unlike trademark registration, the programs at issue 

in the Supreme Court’s cases upholding the constitutionality of conditions under the Spending Clause necessarily

and directly implicate Congress’ power to spend or control

government property. For example, Rust addressed a 

condition on the distribution of federal funds for family 

planning services. 500 U.S. at 177. The Supreme Court’s 

plurality opinion in United States v. American Library 

Association, Inc. upheld a condition on federal funding for 

Internet access to public libraries. 539 U.S. 194, 212 

(2003). While Regan v. Taxation with Representation of 

Washington concerned tax exemptions and deductions, 

the Supreme Court specified, “[b]oth tax exemptions and 

tax-deductibility are a form of subsidy that is administered through the tax system.” 461 U.S. 540, 544 (1983). 

“The federal registration of a trademark is nothing like 

the programs at issue in these cases.” Tam, 137 S. Ct. 

at 1761 (Alito, J.). 

Trademark registration does not implicate Congress’

power to spend funds. An applicant does not receive 

federal funds upon the PTO’s consideration of, or grant of, 

a trademark. The only exchange of funds flows from the 

applicant to the PTO. The applicant pays the applicable 

trademark process and service fees set forth in 37 C.F.R. 

§ 2.6(a)(1), which are then made “available to the Director 

to carry out the activities of the [PTO].” 35 U.S.C. 

§ 42(c)(1). As explained in our en banc opinion in Tam, 

since 1991, trademark registration fees—not appropriations from taxpayers—have entirely funded the direct 

operating expenses associated with trademark registration. 808 F.3d at 1353 (citing, e.g., Figueroa v. United 

States, 466 F.3d 1023, 1028 (Fed. Cir. 2006)). Congress’ 

authority to direct funds is thus not implicated by either 

the operating expenses necessary to examine a proposed 

mark or the PTO’s ultimate grant of trademark registration. Of course, trademark registration does not persist

entirely independent of federal funds. The government 
18 IN RE: BRUNETTI

must expend certain federal funds, including but not 

limited to the cost of PTO employee benefits and costs 

associated with trademark enforcement, in connection 

with trademark registration. See id. (citing Figueroa, 466 

F.3d at 1028). But to the extent government resources 

are tangentially involved with trademark registration, 

“just about every government service requires the expenditure of government funds.” Tam, 137 S. Ct. at 1761 

(listing, for example, police and fire protection, and copyright and motor vehicle registrations) (Alito, J.); Tam, 

808 F.3d at 1353 (“Trademark registration does not 

implicate the Spending Clause merely because of this 

attenuated spending, else every benefit or regulatory 

program provided by the government would implicate the 

Spending Clause.”). The government’s involvement in 

processing and issuing trademarks does not transform 

trademark registration into a government subsidy.

Nor is the grant of trademark registration a subsidy

equivalent. “Registration is significant. The Lanham Act 

confers important legal rights and benefits on trademark 

owners who register their marks.” B&B Hardware, Inc. v. 

Hargis Indus., Inc., 135 S. Ct. 1293, 1300 (2015) (quotation marks omitted). These benefits are numerous and 

include the “right to exclusive nationwide use of that 

mark where there was no prior use by others,” Tam, 808 

F.3d at 1328, a presumption of validity, 15 U.S.C. 

§ 1057(b), incontestability in certain situations, id. § 1065, 

the right to sue in federal court, id. § 1121, the right to 

recover treble damages for willful infringement, id. 

§ 1117, a complete defense to state or common law claims 

of trademark dilution, id. § 1125(c)(6), the assistance of 

U.S. Customs and Border Protection in restricting importation of infringing or counterfeit goods, id. § 1124;

19 U.S.C. § 1526, the right to prevent “cybersquatters” 

from misappropriating a domain name, 15 U.S.C. 

§ 1125(d), and qualification for a simplified process for 

obtaining recognition and protection of a mark in coun-
IN RE: BRUNETTI 19

tries that have signed the Paris Convention, see id.

§ 1141b (Madrid Protocol); Paris Convention for the 

Protection of Industrial Property art. 6quinquies, July 14, 

1967, 21 U.S.T. 1583, 828 U.N.T.S. 305. While these 

benefits are valuable, they are not analogous to Congress’ 

grant of federal funds. The benefits of trademark registration arise from the statutory framework of the Lanham 

Act, and the Lanham Act in turn derives from the Commerce Clause. 

Our sister courts confirm that when government registration does not implicate Congress’ authority under the 

Spending Clause, the government subsidy line of case law 

does not govern the constitutionality of § 2(a)’s bar on 

registering immoral or scandalous marks. See, e.g., Dep’t 

of Tex., Veterans of Foreign Wars v. Tex. Lottery Comm’n,

760 F.3d 427, 436 (5th Cir. 2014) (en banc) (holding a 

bingo program that was “merely licensed and regulated by 

the state” was “wholly distinguishable from the subsidies 

in Taxation with Representation and Rust simply because 

no public monies or ‘spending’ by the state are involved”);

Bullfrog Films, Inc. v. Wick, 847 F.2d 502, 503, 509 (9th 

Cir. 1988) (explaining that a treaty under which certain 

“educational, scientific and cultural audio-visual materials” were granted various benefits, but no federal funds, 

was “fundamentally different” from government subsidy 

programs). As the D.C. Circuit noted, “[t]he Supreme 

Court has never extended the subsidy doctrine to situations not involving financial benefits.” Autor v. Pritzker, 

740 F.3d 176, 182–83 (D.C. Cir. 2014) (declining to apply 

the subsidy doctrine to a presidential directive that impacted committee members who were unpaid). We can 

see no reason to treat trademark registration differently. 

If the government is correct that a registration program, such as this, gives the government the authority to 

regulate the content of speech, then every government 

registration program would provide the government with 

similar censorship authority. For example, there is no 
20 IN RE: BRUNETTI

principled basis to distinguish between the registration of 

trademarks and the registration of copyrights under the 

government program rationale. The subsidy line of case 

law cannot justify the government’s content-based bar on 

registering immoral or scandalous marks.

2. Trademark Registration is Not a Limited Public Forum

The constitutionality of speech restrictions on government property are analyzed under the Supreme 

Court’s “forum analysis,” which “determine[s] when a 

governmental entity, in regulating property in its charge, 

may place limitations on speech.” See, e.g., Christian 

Legal Soc’y of the Univ. of Cal. Hastings Coll. of the Law 

v. Martinez, 561 U.S. 661, 669 (2010). The forum analysis 

is driven by the principle that “the government need not 

permit all forms of speech on property that it owns and 

controls.” Int’l Soc. for Krishna Consciousness, Inc. v. Lee, 

505 U.S. 672, 678 (1992); see also Lehman v. City of 

Shaker Heights, 418 U.S. 298, 303 (1974) (“In much the 

same way that a newspaper or periodical, or even a radio 

or television station, need not accept every proffer of 

advertising from the general public, a city transit system 

has discretion to develop and make reasonable choices 

concerning the type of advertising that may be displayed 

in its vehicles.”). The government may not, however, 

restrict all private speech on its property solely because it 

is the owner. To determine the constitutional bounds of 

speech restrictions on government property, the forum 

analysis instructs us to first classify the government’s 

property as one of three forums.

The first two forums are traditional public forums and 

designated public forums. Traditional public forums are 

places such as “streets and parks which have immemorially been held in trust for the use of the public and, time 

out of mind, have been used for purposes of assembly, 

communicating thoughts between citizens, and discussing 

public questions.” Perry Educ. Ass’n v. Perry Local Edu-
IN RE: BRUNETTI 21

cators’ Ass’n, 460 U.S. 37, 45 (1983) (quotation marks 

omitted). Designated public forums are created when 

“government property that has not traditionally been 

regarded as a public forum is intentionally opened up for 

that purpose.” Pleasant Grove City, Utah v. Summum, 

555 U.S. 460, 469 (2009). In these forums, “the government’s ability to permissibly restrict expressive conduct is 

very limited.” United States v. Grace, 461 U.S. 171, 177

(1983). Content-based restrictions on speech “must be 

narrowly tailored to serve a compelling government 

interest, and restrictions based on viewpoint are prohibited.” Pleasant Grove, 555 U.S. at 469 (internal citation 

omitted).

The remaining forum category is the limited public forum, at times referred to as a non-public forum. Limited 

public forums are places the government has “limited to 

use by certain groups or dedicated solely to the discussion 

of certain subjects.” Id. at 470. As with traditional and 

designated public forums, regulations that discriminate 

based on viewpoint in limited public forums are presumed 

unconstitutional. Rosenberger v. Rector & Visitors of 

Univ. of Va., 515 U.S. 819, 830 (1995). Content-based 

restrictions on speech are subject to a lesser degree of 

scrutiny and remain constitutional “so long as the distinctions drawn are reasonable in light of the purpose served 

by the forum.” Cornelius v. NAACP Legal Def. & Educ. 

Fund, Inc., 473 U.S. 788, 806 (1985). Thus, where the 

government has opened its property for a limited purpose, 

it can constitutionally restrict speech consistent with that 

purpose as long as “the regulation on speech is reasonable 

and not an effort to suppress expression merely because 

officials oppose the speaker’s view.” Perry, 460 U.S. at 46.

The government argues that the federal trademark 

registration program is a limited public forum, subjecting 

§ 2(a)’s content-based restriction on marks comprising 

immoral or scandalous subject matter to a less demanding

degree of scrutiny. Gov’t Letter Br. 14–15, In re Brunetti, 
22 IN RE: BRUNETTI

No. 15-1109, Docket No. 60 (Fed. Cir. July 20, 2017). 

Without articulating why the federal trademark registration program is a limited public forum, the government’s 

letter brief analogizes trademark registration to city 

buses and a military cemetery. Id. at 14. At oral argument, the government identified the principal register as 

the limited public forum, which it contended is a metaphysical forum much like the forum at issue in Rosenberger. Oral Arg. at 28:40–58.2

The Supreme Court has found the existence of a limited public forum only when the government restricts 

speech on its own property. At one end of that spectrum 

are venues that are owned and controlled by government

entities. See, e.g., Greer v. Spock, 424 U.S. 828, 838

(1976) (military base); Jones v. N.C. Prisoners’ Labor 

Union, Inc., 433 U.S. 119, 134 (1977) (prison facilities); 

Int’l Soc. for Krishna Consciousness, 505 U.S. at 680–83 

(Port Authority airport terminal). These cases unquestionably concern “a governmental entity, . . . regulating 

property in its charge.” See Christian Legal, 561 U.S. 

at 669. Other cases involve property that is clearly government owned, although present in public locations. See, 

e.g., United States v. Kokinda, 497 U.S. 720, 727–30 

(1990) (sidewalk outside of Postal Service); Members of

City Council of L.A. v. Taxpayers for Vincent, 466 U.S. 

789, 814 (1984) (public utility poles). Several of the 

2 Apart from the inconsistency of this argument 

with the government’s previous representation in Tam—

in which it stated it did not believe the forum analysis 

applied to trademark registration, and in particular that 

it did not “regard the register itself as a forum”—this 

argument fails as a legal matter. See Tam, 808 F.3d 

1321, Oral Arg. at 1:14:25–1:14:58; Tam, 808 F.3d at 1353 

n.12.

 
IN RE: BRUNETTI 23

Court’s remaining limited public forum cases involve 

speech restrictions that occur on public school property. 

See, e.g., Christian Legal, 561 U.S. at 679 n.12 (registered 

student organization); Good News Club v. Milford Cent. 

Sch., 533 U.S. 98, 106 (2001) (public school opened for 

instruction and recreation); Lamb’s Chapel v. Ctr. 

Moriches Union Free Sch. Dist., 508 U.S. 384, 390–92

(1993) (public school opened for social, civic, and recreational uses); Perry, 460 U.S. at 46–47 (public school mail 

facilities). 

While some of the Supreme Court’s limited public forum cases have involved forums that exist “more in a 

metaphysical than in a spatial or geographic sense,” these 

forums have nonetheless been tethered to government 

properties. See Rosenberger, 515 U.S. at 830. In Rosenberger, the Supreme Court considered a University’s 

distribution of funds through a Student Activities Fund 

(“SAF”) intended to “support a broad range of extracurricular student activities that ‘are related to the educational

purpose of the University.’” Id. at 824. The Court concluded the SAF was a limited public forum that “effects a 

sweeping restriction on student thought and student 

inquiry in the context of University sponsored publications.” Id. at 829–30, 836. Although the SAF was “metaphysical”—in that it concerned use of the University’s 

funds rather than the University’s facilities, id. at 830—

the effect of its restrictions on speech were felt on the 

government’s property, the University. See id. at 836

(explaining the SAF “risks the suppression of free speech 

and creative inquiry in one of the vital centers for the 

Nation’s intellectual life, its college and university campuses”). The forum at issue in Cornelius likewise involved 

a more abstract forum—a charity drive—but that drive 

was “conducted in the federal workplace during working 

hours.” 473 U.S. at 790. And while the Supreme Court 

has applied the forum analysis to broadcasting, it did so 

in the context of a state-owned broadcaster’s sponsorship 
24 IN RE: BRUNETTI

of a particular debate at its facilities. See Ark. Educ. 

Television Comm’n v. Forbes, 523 U.S. 666, 669, 672

(1998). 

Because trademarks are by definition used in commerce, the trademark registration program bears no 

resemblance to these limited public forums. The speech 

that flows from trademark registration is not tethered to 

a public school, federal workplace, or any other government property. A principal feature of trademarks is that 

they help “consumers identify goods and services that 

they wish to purchase, as well as those they want to 

avoid.” Tam, 137 S. Ct. at 1751. “These marks make up 

part of the expression of everyday life, as with the names 

of entertainment groups, broadcast networks, designer 

clothing, newspapers, automobiles, candy bars, toys, and 

so on.” Id. at 1768 (Kennedy, J.). By their very purpose, 

trademarks exist to convey messages throughout commerce. It is difficult to analogize the Nike swoosh or the 

Nike JUST DO IT mark located on a Nike shirt in a Nike 

store as somehow a government created limited public 

forum. The registration and use of registered trademarks 

simply does not fit within the rubric of public or limited 

public forum cases. “[T]he forum analysis requires consideration not only of whether government property has 

been opened to the public, but also of the nature and 

purpose of the property at issue.” Preminger, 517 F.3d 

1299 (internal citations omitted); see also Cornelius, 473 

U.S. at 805 (examining the nature of the government 

property involved). 

A snapshot of marks recently rejected under the immoral or scandalous provision reveals the breadth of 

goods and services impacted by § 2(a)’s bar on such

marks, including speech occurring on clothing, books, 

websites, beverages, mechanical contraptions, and live 

entertainment. These refusals chill speech anywhere

from the Internet to the grocery store. And none of them 

involve government property over which the government 
IN RE: BRUNETTI 25

can assert a right to “legally preserve the property under 

its control for the use to which it is dedicated.” Lamb’s 

Chapel, 508 U.S. at 390. 

That registered marks also appear on the government’s principal register does not transform trademark 

registration into a limited public forum. The government 

does not open the principal register to any exchange of 

ideas—it is ancillary to trademark registration. The 

principal register is simply a database identifying the 

marks approved for use in commerce. Oral Arg. at 29:28–

41. Apart from its function as a database, the government has been unable to define exactly what the principal

register is, or where it is located. Id. at 29:34–54. If the 

government can constitutionally restrain the expression 

of private speech in commerce because such speech is

identified in a government database, so too could the 

government restrain speech occurring on private land or 

in connection with privately-owned vehicles, simply 

because those private properties are listed in a database. 

Cf. Tam, 137 S. Ct. at 1760 (“For if the registration of 

trademarks constituted government speech, other systems of government registration could easily be characterized in the same way.”). As the government recognized,

such a suppression of speech would raise serious concerns 

under the unconstitutional conditions doctrine. See Oral 

Arg. at 29:56–30:34 (“[T]he key difference there is the 

application of the unconstitutional conditions doctrine, 

which is the significant constraint on the government’s 

ability to abuse its power over something like a land 

registry to influence speech outside a program.”). The 

government fails to articulate a reason why the government’s listing of registered trademarks in a database 

creates a limited public forum. And if it did then every 

government registration program including titles to land, 

registration of cars, registration of wills or estates, copyrights, even marriage licenses could similarly implicate a 

limited public forum. We thus conclude that government 
26 IN RE: BRUNETTI

registration of trademarks does not create a limited public 

forum in which the government can more freely restrict 

speech. 

3.The Prohibition on the Registration of Immoral or

Scandalous Trademarks Targets the Expressive Content 

of Speech and Therefore Strict Scrutiny Should Be 

Applied

Commercial speech is speech which does “no more 

than propose a commercial transaction.” Va. State Bd. of 

Pharmacy v. Va. Citizens Consumer Council, Inc., 425 

U.S. 748, 762 (1976) (citation omitted). Trademarks 

certainly convey a commercial message, but not exclusively so. There is no doubt that trademarks “identify the 

source of a product or service, and therefore play a role in 

the ‘dissemination of information as to who is producing 

and selling what product, for what reason, and at what 

price.’” Tam, 808 F.3d at 1338 (quoting Va. State Bd. of 

Pharmacy, 425 U.S. at 765). However, trademarks—

including immoral or scandalous trademarks—also “often 

have an expressive content.” Tam, 137 S. Ct. at 1760. 

For immoral or scandalous marks, this message is often 

uncouth. But it can espouse a powerful cause. See, e.g.,

FUCK HEROIN, Appl. No. 86,361,326; FUCK CANCER, 

Appl. No. 86,290,011; FUCK RACISM, Appl. 

No. 85,608,559. It can put forth a political view, see

DEMOCRAT.BS, Appl. No. 77,042,069, or 

REPUBLICAN.BS, Appl. No. 77,042,071. While the 

speech expressed in trademarks is brief, “powerful messages can sometimes be conveyed in just a few words.” 

Tam, 137 S. Ct. at 1760. 

The test used by the PTO to prohibit immoral or scandalous marks is whether a “substantial composite of the 
IN RE: BRUNETTI 27

general public”3 would find the mark “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.” Fox, 

702 F.3d at 665. There can be no question that the immoral or scandalous prohibition targets the expressive 

components of the speech. As in this case, the agency 

often justifies its rejection of marks on the grounds that 

they convey offensive ideas. J.A. 8–9 (explaining that Mr. 

Brunetti’s use of his trademark is scandalous because his 

mark “objectifies women and offers degrading examples of 

extreme misogyny” and contains a theme “of extreme 

nihilism” with “anti-social imagery” and is “lacking in 

taste”). These are each value judgments about the expressive message behind the trademark. Whether marks 

comprise immoral or scandalous subject matter hinges on 

the expressive, not source-identifying, nature of trademarks. 

While different provisions of the Lanham Act may appropriately be classified as targeting a mark’s sourceidentifying information—for example, § 2(e)’s bar on 

registering marks that are “merely descriptive” or “geographically descriptive”—the immoral or scandalous 

provision targets a mark’s expressive message, which is 

separate and distinct from the commercial purpose of a 

mark as a source identifier. Justice Kennedy explained in 

his concurrence: “The central purpose of trademark 

registration is to facilitate source identification. . . . 

Whether a mark is disparaging bears no plausible relation to that goal.” 137 S. Ct. at 1768 (Kennedy, J.). We 

find the same logic applies to the immoral or scandalous 

3 The PTO justifies its refusals by “tying censorship 

to the reaction of the speaker’s audience.” See Tam, 137 

S. Ct. at 1766 (Kennedy, J.).

 
28 IN RE: BRUNETTI

prohibition. As in the case of disparaging marks, the 

PTO’s rejections under § 2(a)’s bar on immoral or scandalous marks are necessarily based in the government’s 

belief that the rejected mark conveys an expressive message—namely, a message that is scandalous or offensive 

to a substantial composite of the general population. See 

Tam, 808 F.3d at 1338. Section 2(a) regulates the expressive components of speech, not the commercial components of speech, and as such it should be subject to strict 

scrutiny. See Sorrell v. IMS Health Inc., 564 U.S. 

552, 565 (2011). There is no dispute that § 2(a)’s bar on 

the registration of immoral or scandalous marks is unconstitutional if strict scrutiny applies. 

4. Section 2(a)’s Bar on Immoral or Scandalous Marks 

Does Not Survive Intermediate Scrutiny

Section 2(a)’s bar on the registration of immoral or 

scandalous marks is unconstitutional even if treated as a 

regulation of purely commercial speech reviewed according to the intermediate scrutiny framework established in

Central Hudson, 447 U.S. at 566. Intermediate scrutiny 

requires that “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.” Sorrell, 564 U.S. at 572.

Commercial speech is subject to a four-part test which 

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) whether the regulation is 

“not more extensive than necessary to serve that interest.” Central Hudson, 447 U.S. at 566; see also Bd. of Tr. 

of State Univ. of N.Y. v. Fox, 492 U.S. 469, 479–80 (1989)

(explaining the fourth prong of Central Hudson requires 

“not necessarily the least restrictive means but . . . a 

means narrowly tailored to achieve the desired objective”). “Under a commercial speech inquiry, it is the 
IN RE: BRUNETTI 29

State’s burden to justify its content-based law as consistent with the First Amendment.” Sorrell, 564 U.S. 

at 565.

The immoral or scandalous provision clearly meets 

the first prong of the Central Hudson test, which requires 

we first confirm the speech “concern lawful activity and 

not be misleading.” 447 U.S. at 566. Section 2(a)’s provision barring immoral or scandalous marks, like the disparagement provision, does not address misleading, 

deceptive, or unlawful marks. Rather it is concerned with 

whether a mark is offensive, scandalous, or vulgar to a 

substantial composite of the general public.

Central Hudson’s second prong, requiring a substantial government interest, is not met. The only government interest related to the immoral or scandalous 

provision that we can discern from the government’s 

briefing is its interest in “protecting public order and 

morality.” Gov’t Letter Br. 15 & n.6, In re Brunetti, 

No. 15-1109, Docket No. 60 (Fed. Cir. July 20, 2017).4 At 

oral argument, the government struggled to identify the 

substantial interest in barring registration of trademarks 

comprising immoral or scandalous subject matter. The 

government framed its interest based on the government’s 

own perception of proposed marks, including what types 

of marks the government would “want to promote” or “has 

deemed to be most suitable.” Oral Arg. at 22:35–41, 

4 The government’s brief also made an errant reference to its interest “in the orderly flow of commerce.” 

Gov’t Letter Br. 15, In re Brunetti, No. 15-1109, Docket 

No. 60 (Fed. Cir. July 20, 2017). While we do not question 

the substantiality of this interest, the government has 

failed to articulate how this interest is in any way advanced by the immoral or scandalous prohibition, or how 

that provision is narrowly tailored to that interest.

 
30 IN RE: BRUNETTI

22:56–23:00. At another point, the government indicated 

its interest is to shield its examiners from immoral or 

scandalous marks: “whether or not its examiners are 

forced to decide whether one drawing of genitalia is 

confusingly similar to another drawing of genitalia.” Id.

at 21:51–22:12. Ultimately, the government stated, 

“Congress’ primary interest is the promotion of the use of 

non-scandalous marks in commerce.” Id. at 23:33–42; see 

also id. at 25:21–32 (“Promoting commerce that doesn’t 

include the use of source identifiers that are graphic 

sexual images or profanities that are going to be offputting to a substantial composite of the public.”). 

Whichever articulation of the government’s interest we 

choose, the government has failed to identify a substantial interest justifying its suppression of immoral or 

scandalous trademarks.5 

First, the government does not have a substantial interest in promoting certain trademarks over others. The 

Supreme Court rejected the government’s claim that 

trademarks are government speech. Tam, 137 S. Ct. 

at 1757–61. Our conclusion that trademark registration 

is neither a government subsidy nor a limited public 

forum forecloses any remaining interest the government

may have in approving only marks it “has deemed to be 

most suitable.” Oral Arg. at 22:56–23:00; see also Tam, 

5 We note that the government hardly met its burden to identify a government interest at all. To identify 

this purported interest, the government has done no more 

than “taken the effect of the statute and posited that effect 

as the State’s interest. If accepted, this sort of circular 

defense can sidestep judicial review of almost any statute, 

because it makes all statutes look narrowly tailored.” 

Simon & Schuster, Inc. v. Members of N.Y. State Crime 

Victims Bd., 502 U.S. 105, 120 (1991).

 
IN RE: BRUNETTI 31

137 S. Ct. at 1760–63 (plurality rejecting the government 

subsidy argument) (Alito, J.). 

Second, Supreme Court precedent makes clear that 

the government’s general interest in protecting the public 

from marks it deems “off-putting,” whether to protect the 

general public or the government itself, is not a substantial interest justifying broad suppression of speech. “[T]he 

fact that society may find speech offensive is not a sufficient reason for suppressing it.” Hustler Magazine, Inc. v. 

Falwell, 485 U.S. 46, 55 (1988); Bolger v. Youngs Drug 

Prods. Corp., 463 U.S. 60, 71 (1983) (“At least where 

obscenity is not involved, we have consistently held that 

the fact that protected speech may be offensive to some 

does not justify its suppression.” (citation omitted)); 

Cohen v. California, 403 U.S. 15, 21 (1971) (“[T]he mere 

presumed presence of unwitting listeners or viewers does 

not serve automatically to justify curtailing all speech 

capable of giving offense.”); Cox, 379 U.S. at 551 

(“[C]onstitutional rights may not be denied simply because of hostility to their assertion or exercise.”). “Where 

the designed benefit of a content-based speech restriction 

is to shield the sensibilities of listeners, the general rule is 

that the right of expression prevails, even where no less 

restrictive alternative exists.” Playboy, 529 U.S. at 813. 

The Supreme Court’s decision in Tam supports our 

conclusion that the government’s interest in protecting 

the public from off-putting marks is an inadequate government interest for First Amendment purposes. See, 

e.g., 137 S. Ct. at 1764 (applying Central Hudson and 

rejecting the government’s “interest in preventing speech 

expressing ideas that offend” because “that idea strikes at 

the heart of the First Amendment”) (Alito, J.). In Tam, 

the Court acknowledged that it is a “bedrock First 

Amendment principle” that “Speech may not be banned 

on the ground that it expresses ideas that offend.” Tam, 

137 S. Ct. at 1751 (Alito, J.); see also id. at 1767 (“[T]he 

Court’s cases have long prohibited the government from 
32 IN RE: BRUNETTI

justifying a First Amendment burden by pointing to the 

offensiveness of the speech to be suppressed.”) (Kennedy, 

J.). Both Justice Alito’s and Justice Kennedy’s opinions 

support their conclusions that the disparagement provision is unconstitutional citing cases holding “the public 

expression of ideas may not be prohibited merely because 

the ideas are themselves offensive to some of their hearers.” Id. at 1763 (collecting cases) (quoting Street v. New 

York, 394 U.S. 576, 592 (1969)) (Alito, J.); id. at 1767 

(citing Justice Alito’s opinion at 1763–64) (Kennedy, J.); 

see also Texas v. Johnson, 491 U.S. 397, 414 (1989) (“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.”); Coates v. Cincinnati,

402 U.S. 611, 615 (1971) (“[M]ere public intolerance or 

animosity cannot be the basis for abridgment of these 

constitutional freedoms.”). The government’s interest in 

suppressing speech because it is off-putting is unavailing. 

While the government’s interest in Tam related to a 

viewpoint-based restriction on speech, we note the cases 

on which the Supreme Court relied are not so limited. 

The cases cited in Tam are directed to speech that may be 

offensive, but not all involve speech that is disparaging or 

viewpoint discriminatory. Many involve speech that, 

rather than disparaging others, involved peaceful demonstrations. See, e.g., Bachellar v. Maryland, 397 U.S. 564, 

566–67 (1970) (peaceful Vietnam war protest carrying 

signs such as “Make Love not War”); Tinker v. Des Moines 

Indep. Cmty. Sch. Dist., 393 U.S. 503, 509–14 (1969) 

(wearing black armbands to protest Vietnam war); Cox v. 

Louisiana, 379 U.S. 536, 545, 550–51 (1965) (protesting 

segregation and discrimination); De Jonge v. Oregon, 299 

U.S. 353, 365 (1937) (peaceful political meeting). Several 

other cases do not appear to involve viewpoint discrimination at all. For example, Hustler Magazine concerned a

parody interview of Jerry Falwell in which the actor 
IN RE: BRUNETTI 33

playing him stated his “‘first time’ was during a drunken 

incestuous rendezvous with his mother in an outhouse.” 

485 U.S. at 48. While such a parody interview is offensive, its function as a parody does not clearly involve the 

expression of beliefs, ideas, or perspectives. Similarly, the 

ordinance at issue in Coates was not limited to restricting 

disparaging speech or certain viewpoints, but prohibited 

any conduct perceived as “annoying to persons passing 

by.” 402 U.S. at 611. The Supreme Court’s narrative that 

the government cannot justify restricting speech because 

it offends, together with its reliance on cases involving a 

variety of different speech restrictions, reinforce our 

conclusion that the government’s interest in protecting 

the public from off-putting marks is not substantial. 

Finally, the government does not have a substantial 

interest in protecting the public from scandalousness and 

profanities. The government attempts to justify this

interest by pointing to the Supreme Court’s decision in 

FCC v. Pacifica Foundation, 438 U.S. 726 (1978). In 

Pacifica, the Supreme Court upheld the constitutionality 

of the FCC’s declaratory order determining that an afternoon radio broadcast of George Carlin’s “Filthy Words” 

monologue was indecent and potentially sanctionable. Id.

at 730–32. The Court explained “references to excretory 

and sexual material . . . surely lie at the periphery of First 

Amendment concern.” Id. at 742. The Court justified the 

FCC’s order, however, because 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 of

the home, where the individual’s right to be left alone 

plainly outweighs the First Amendment rights of an 

intruder.” Id. at 749. The Court stressed: “It is appropriate to emphasize the narrowness of our holding.” Id. at 

750. Subsequent precedent explained that other mediums 

of communication, such as dial-in-services or the Internet, 

are “manifestly different from a situation in which a 
34 IN RE: BRUNETTI

listener does not want the received message.” Sable 

Commc’ns of Cal., Inc. v. FCC, 492 U.S. 115, 128 (1989) 

(“Unlike an unexpected outburst on a radio broadcast, the 

message received by one who places a call to a dial-a-porn 

service is not so invasive or surprising that it prevents an 

unwilling listener from avoiding exposure to it.”); Reno v. 

Am. Civil Liberties Union, 521 U.S. 844, 868–69 (1997) 

(explaining Pacifica does not control because “the Internet 

is not as ‘invasive’ as radio or television”). 

The government’s interest in protecting the public 

from profane and scandalous marks is not akin to the 

government’s interest in protecting children and other 

unsuspecting listeners from a barrage of swear words over 

the radio in Pacifica. A trademark is not foisted upon 

listeners by virtue of its being registered. Nor does registration make a scandalous mark more accessible to children. Absent any concerns that trademark registration 

invades a substantial privacy interest in an intolerable 

manner, the government’s interest amounts to protecting 

everyone, including adults, from scandalous content. But 

even when “many adults themselves would find the 

material highly offensive,” adults have a First Amendment right to view and hear speech that is profane and 

scandalous. Playboy, 529 U.S. at 811 (First Amendment 

right to view “sexually explicit adult programming or 

other programming that is indecent”); Sable, 492 U.S. 

at 115 (“Sexual expression which is indecent but not 

obscene is protected by the First Amendment.”). In 

crafting a substantial government interest, “the government may not ‘reduce the adult population . . . to . . . only 

what is fit for children.’” Bolger, 463 U.S. at 73 (citation 

omitted); cf. Sable, 492 U.S. at 131 (“[T]he statute’s denial 

of adult access to telephone messages which are indecent 

but not obscene far exceeds that which is necessary to 

limit the access of minors to such messages . . . .”). 

Even if we were to hold that the government has a 

substantial interest in protecting the public from scandal-
IN RE: BRUNETTI 35

ous or immoral marks, the government could not meet the 

third prong of Central Hudson, which requires the regulation directly advance the government’s asserted interest. 

447 U.S. at 566. As the government has repeatedly 

exhorted, § 2(a) does not directly prevent applicants from 

using their marks. Regardless of whether a trademark is 

federally registered, an applicant can still brand clothing 

with his mark, advertise with it on the television or radio, 

or place it on billboards along the highway. In this electronic/Internet age, to the extent that the government 

seeks to protect the general population from scandalous 

material, with all due respect, it has completely failed.

Finally, no 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.” 

See Reno, 521 U.S. at 871. Nearly identical marks have 

been approved by one examining attorney and rejected as 

scandalous or immoral by another. The PTO registered 

the mark FUGLY for use on clothing, but refused registration for use on alcoholic beverages. Compare Reg. 

No. 5,135,615, with Appl. No. 78,866,347. See also

COCAINE, Appl. No. 78,829,207 (rejected), COCAINE, 

Reg. No. 1,340,874 (accepted). The PTO registered NO 

BS! BRASS, Reg. No. Reg. No. 5,053,827, for entertainment services but rejected NO BS ZONE, Appl. 

No. 76,626,390, for internet training. NO $#!+, Appl. 

No. 85,855,449, was rejected, but $#*! MY DAD SAYS, 

Reg. No. 4,142,745, was allowed. See also ROLL TURD, 

Appl. No. 86,448,988 (rejected), TURD HERDERS, Reg. 

No. 5,180,286 (registered). 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.
36 IN RE: BRUNETTI

One commentator has written that, of the forty marks 

containing the acronym MILF for which written records 

were available as of 2011, twenty marks received an office 

action refusing registration based on § 2(a), while twenty 

did not. Anne Gilson LaLonde & Jerome Gilson, Trademarks Laid Bare: Marks That May Be Scandalous or 

Immoral, 101 Trademark Rep. 1476, 1478–82 (2011). It is 

difficult to understand what distinguished the refused 

marks, which included GOT MILF (clothing), MILF 

MANIA (adult online services), MILF SEEKER (adult 

entertainment services), and FROM SOCCER MOM TO 

MILF (self-help books for women), from the marks which 

were registered, including DIARY OF A MILF (adult 

online services), BACKROOM MILF (adult online services), FAT MILF (sandwich), and MILF NEXT DOOR 

(adult online services). Id. Another empirical study 

identified words that served as the basis of a § 2(a) refusal 

in some marks but were material components of other 

marks approved by the PTO. The authors found that to 

the extent there are general trends in the PTO’s treatment of the offensive terms, “those general trends are 

apparently inconsistent with one another.” Meghan M. 

Carpenter & Mary Garner, NSFW: An Empirical Study of 

Scandalous Trademarks, 33 Cardozo Arts & Ent. L.J. 321, 

356–61 (2015). Even marks that reference the indisputably vulgar term “fuck,” like the mark at issue here, are 

not always rejected as a matter of course. The PTO 

registered the mark FCUK, but rejected the marks FUCT 

and F**K PROJECT as scandalous. It allowed the registration of MUTHA EFFIN BINGO, Reg. No. 4,183,272,

and IF WE TOUCH IT, IT’S FN GOLDEN, Reg. 

No. 4,100,978, but not F ALL F’S APPAREL FOR THE 

F’N ANGRY, Appl. No. 78,420,315.6 

6 The PTO’s inconsistent rejections under the im-

 
IN RE: BRUNETTI 37

The Trademark Trial and Appeal Board has itself noted the vague and subjective nature of the scandalous 

inquiry. In re In Over Our Heads, Inc., 1990 WL 354546 

at *1 (“[T]he 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.”). It can no 

doubt be a difficult task to determine public perceptions of 

a trademark’s morality or immorality, offensiveness, or 

even vulgarity. As the Supreme Court has explained, “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.” Cohen, 403 U.S. at 25. To be sure, there are other 

trademark’s whose offensiveness cannot be reasonably 

questioned; the government attached an appendix with 

examples of such marks which it has rejected to this 

court. But the subjectivity in the determination of what is 

immoral or scandalous and the disparate and unpredictable application of these principles cause us to conclude 

that the prohibition at issue in this case would also fail 

the fourth prong of the Central Hudson analysis. 

We conclude that the government has not presented us 

with a substantial government interest justifying the 

§ 2(a) bar on immoral or scandalous marks. As we conmoral or scandalous provision also raise concerns about 

the provision’s vagueness. See Tam, 808 F.3d at 1359 

(O’Malley, J., concurring) (opining that § 2(a)’s bar on 

disparaging marks was unconstitutionally vague and 

identifying examples “where there is no conceivable 

difference between the applied-for marks, yet one is 

approved and the other rejected”). We need not reach 

whether the immoral or scandalous provision is so vague 

that it violates the Fifth Amendment. 

 
38 IN RE: BRUNETTI

cluded in Tam, “All of the government’s proffered interests boil down to permitting the government to burden 

speech it finds offensive.” Tam, 808 F.3d at 1357. We 

also conclude that the government has failed to demonstrate that its restriction will advance the interests it 

asserts and that it is narrowly tailored to achieve that 

objective. Section 2(a)’s bar on immoral or scandalous 

marks does not survive intermediate scrutiny under 

Central Hudson. 

5. There Is No Reasonable Definition of the Statutory 

Terms Scandalous and Immoral Which Would Preserve 

Their Constitutionality 

We construe statutes narrowly to preserve their constitutionality, when possible. See Schneider v. Smith, 

390 U.S. 17, 26 (1968). However, “[t]he infringement of 

First Amendment rights will not be cured if the narrowing construction is so unforeseeable that men of common 

intelligence could not have realized the law’s limited 

scope at the only relevant time, when their acts were 

committed, or if the law remains excessively sweeping 

even as narrowed.” Gregory v. City of Chi., 394 U.S. 111, 

121 (1969) (citations omitted). Our duty to avoid constitutional questions “is not a license for the judiciary to 

rewrite language enacted by the legislature. Any other 

conclusion, while purporting to be an exercise in judicial 

restraint, would trench upon the legislative powers vested 

in Congress.” United States v. Albertini, 472 U.S. 675, 

680 (1985) (citations omitted). It is thus permissible to 

construe a statute in a manner that preserves its constitutionality only where the construction is reasonable.

The concurrence agrees that the scandalous and immoral prohibitions as construed by the government, this 

court, and our predecessor court are unconstitutional. 

This court and its predecessor have consistently defined 

“scandalous” as “shocking to the sense of truth, decency, 

or propriety; disgraceful; offensive; disreputable; giving 
IN RE: BRUNETTI 39

offense to the conscience or moral feelings; or calling out 

for condemnation.” Fox, 702 F.3d at 635; accord McGinley, 660 F.2d at 485; Riverbank Canning Co., 95 F.3d at 

328. The concurrence proposes that we “narrow the 

immoral-scandalous provision’s scope to obscene marks in 

order to preserve its constitutionality.” Conc. Op. 5–6. 

While the legislature could rewrite the statute to adopt 

such a standard, we cannot. 

It is not reasonable to construe the words immoral 

and scandalous as confined to obscene material. There is 

no dispute that an obscene mark would be scandalous or 

immoral; however, not all scandalous or immoral marks 

are obscene. All apples are fruit, but not all fruits are 

apples. As the PTO has explained, “the threshold for 

objectionable matter is lower for what can be described as 

‘scandalous’ than for ‘obscene.’” J.A. 4 (citation omitted); 

accord McGinley, 660 F.2d at 487 n.9. The PTO has for a 

century rejected marks as scandalous or immoral that are 

clearly not obscene. As set forth above, many of the early 

cases applying the immoral or scandalous provision 

involved blasphemous marks touching on religion, which 

were not obscene.7

7 With no authority, the concurrence suggests “the 

central aim of the immoral-scandalous provision . . . has 

been sexual material.” Conc. Op. 6–7. To the contrary, 

there is a long history of rejecting numerous categories of 

non-sexual material under this provision. See generally

LaLonde & Gilson, supra, at 1510–14, 1517–33 (discussing the application of the provision to marks related to 

religion, drug references, violence, disparaging patriotic 

symbols, mild profanity, and scatological references). 

Moreover, the concurrence suggests narrowing the immoral or scandalous provision to obscene material would 

 
40 IN RE: BRUNETTI

The Supreme Court has made clear that the definition 

of obscenity for purposes of the First Amendment is 

“material which deals with sex in a manner appealing to 

prurient interest,” i.e., “material having a tendency to 

excite lustful thoughts.” Roth v. United States, 354 U.S. 

476, 487 & n.20 (1957). This “definition does not reflect 

the precise meaning of ‘obscene’ as traditionally used in 

the English language,” and instead is limited to “obscene 

material ‘which deals with sex.’” Miller v. California, 413 

U.S. 15, 20 n.2 (1973) (emphasis added). 

Despite the concurrence’s suggestion to the contrary, 

none of the dictionary definitions cited define “immoral” 

or “scandalous” in sexual terms.8 Immoral, Black’s Law 

Dictionary (1st ed. 1891) (“Contrary to good morals; 

inconsistent with the rules and principles of morality 

which regard men as living in a community, and which 

are necessary for the public welfare, order, and decency.”); 

Immoral, Webster’s Collegiate Dictionary (1898) (“Not 

moral; inconsistent with good morals; contrary to conscience or the divine law.”); Scandalous, Id. (“1. Giving 

offense to the conscience or moral feelings. 2. Disgraceful 

be consistent with PTO action. The marks cited by the 

concurrence, like the FUCT mark at issue in this case, 

would not be properly refused under a prohibition limited 

to obscenity. See Conc. Op. 7 n.7.

8 The concurrence’s reliance on overlapping dictionary definitions of “immoral,” “scandalous,” and “obscene” 

ignores this important limitation. The question before us 

is not whether the obscene material is “immoral” and 

“scandalous,” but rather whether Congress intended the 

terms “immoral” or “scandalous” to be confined to material that is “obscene” for the purposes of a First Amendment 

analysis.

 
IN RE: BRUNETTI 41

to reputation; opprobrious. 3. Defamatory; libelous.”); 

Immoral, Webster’s Complete Dictionary (1886) (“Not 

moral; inconsistent rectitude; contrary to conscience or 

the divine law; wicked; unjust; dishonest; vicious”); Scandalous, Id. (“1. Giving offense; exciting reprobation; 

calling out condemnation; extremely offensive to duty or 

propriety” “2. Disgraceful to reputation; bringing shame 

or infamy; opprobrious” “3. Defamatory; libelous”).

Unlike the terms “immoral” and “scandalous,” the

statutory terms at issue in the cases cited in the concurrence are by their nature limited to material “which deals 

with sex.” See, e.g., Brockett v. Spokane Arcades, Inc., 472 

U.S. 491, 494 (1985) (construing phrase “that which 

incites lasciviousness or lust”); Manual Enters., Inc. v. 

Day, 370 U.S. 478, 482–83 (1962) (opinion of Harlan, J.) 

(“While in common usage the words have different shades 

of meaning, the statute since its inception has always 

been taken as aimed at obnoxiously debasing portrayals 

of sex.” (footnote omitted)); Swearingen v. United States, 

161 U.S. 446, 451 (1896) (“The words ‘obscene,’ ‘lewd,’ and 

‘lascivious,’ as used in the statute, signify that form of 

immorality which has relation to sexual impurity . . . .”). 

We do not see how the words “immoral” and “scandalous” 

could reasonably be read to be limited to material of a 

sexual nature. We cannot stand in the shoes of the legislature and rewrite a statute.

CONCLUSION

The trademark at issue is vulgar. And the government included an appendix in its briefing to the court 

which contains numerous highly offensive, even shocking, 

images and words for which individuals have sought 

trademark registration. Many of the marks rejected 

under § 2(a)’s bar on immoral or scandalous marks, 

including the marks discussed in this opinion, are lewd, 

crass, or even disturbing. We find the use of such marks 

in commerce discomforting, and are not eager to see a 
42 IN RE: BRUNETTI

proliferation of such marks in the marketplace. There 

are, however, a cadre of similarly offensive images and 

words that have secured copyright registration by the 

government. There are countless songs with vulgar lyrics, 

blasphemous images, scandalous books and paintings, all 

of which are protected under federal law. No doubt many 

works registered with the Copyright Office offend a substantial composite of the general public. There are words 

and images that we do not wish to be confronted with, not 

as art, nor in the marketplace. The First Amendment, 

however, protects private expression, even private expression which is offensive to a substantial composite of the 

general public. The government has offered no substantial government interest for policing offensive speech in 

the context of a registration program such as the one at 

issue in this case. 

We hold that the bar in § 2(a) against immoral or 

scandalous marks is unconstitutional because it violates 

the First Amendment. We reverse the Board’s holding 

that Mr. Brunetti’s mark is unregistrable under § 2(a).

REVERSED
United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: ERIK BRUNETTI,

Appellant

______________________ 

2015-1109

______________________ 

Appeal from the United States Patent and Trademark 

Office, Trademark Trial and Appeal Board in No. 

85310960.

______________________ 

DYK, Circuit Judge, concurring in the judgment. 

The majority today strikes down as unconstitutional a 

century-old provision of the Lanham Act that prohibits 

the registration of “immoral . . . or scandalous” marks. 15 

U.S.C. § 1052(a). In doing so, it notes our obligation to 

“construe statutes narrowly to preserve their constitutionality, when possible.” Maj. Op. 38. It concludes, 

however, that there is no such reasonable narrow construction. Id. at 38-41. I think that such a saving construction is possible and that we are obligated to adopt it.

As an initial matter, I agree with the majority that 

the Supreme Court’s recent decision in Matal v. Tam, 137 

S. Ct. 1744 (2017), does not dictate the facial invalidity of 

the immoral-scandalous provision. Tam held only that 

the disparagement provision of the Lanham Act was 

unconstitutional because it was not viewpoint neutral; it 

did not address the immoral-scandalous provision at issue 

here. See id. at 1763-65 (plurality op.); id. at 1765-69 

(Kennedy, J., concurring in part and concurring in the 
2 IN RE: BRUNETTI

judgment). So too did the opinions reserve judgment as to 

the other Lanham Act provisions. Id. at 1763 n.16 (plurality op.) (“We leave open the question whether this is 

the appropriate framework for analyzing free speech 

challenges to provisions of the Lanham Act.”); id. at 1768 

(Kennedy, J.) (“This case does not present the question of 

how other provisions of the Lanham Act should be analyzed under the First Amendment.”). Nonetheless, I also 

agree that the immoral-scandalous provision raises some 

serious First Amendment questions, as the majority 

opinion concludes. See Maj. Op. 28-38.1

I think that we are obligated to construe the statute 

to avoid these constitutional questions. Courts must, 

“where possible, construe federal statutes so as ‘to avoid 

serious doubt of their constitutionality.’” Stern v. Marshall, 564 U.S. 462, 477 (2011) (quoting Commodity 

Futures Trading Comm’n v. Schor, 478 U.S. 833, 841 

(1986)). A saving construction of a statute need only be 

“fairly possible,” and “every reasonable construction must 

be resorted to.” Nat’l Fed’n of Indep. Bus. v. Sebelius, 567 

U.S. 519, 563 (2012) (first quoting Crowell v. Benson, 285 

U.S. 22, 62 (1932); then quoting Hooper v. California, 155 

U.S. 648, 657 (1895)).

One such fairly possible reading is available to us 

here by limiting the clause’s reach to obscene marks, 

which are not protected by the First Amendment. Where 

the regulation of speech is concerned, the Supreme Court 

has a long history of narrowing the scope of similarly

worded statutes to cover only obscene speech. The most 

1 The majority states that I “agree[] that the scandalous and immoral prohibitions . . . are unconstitutional.” Id. at 38. As discussed more fully below, following 

the Supreme Court’s instructions, I would adopt a narrowing construction specifically in order to avoid these 

difficult constitutional questions.

 
IN RE: BRUNETTI 3

prominent examples are the federal obscenity statutes. In 

1896, the Supreme Court considered an early version of 

these laws, which criminalized the mailing of “obscene, 

lewd or lascivious” materials. Swearingen v. United 

States, 161 U.S. 446, 450 (1896). While acknowledging 

that “it might be inferred that each of those epithets 

pointed out a distinct offense”—the familiar canon against 

superfluities—the Court nevertheless construed the 

statute narrowly to “describ[e] one and the same offense,” 

namely, the mailing of obscene materials. Id.

The obscenity statutes were later amended to include 

an even broader description of the targeted matter. 

Today, 18 U.S.C. § 1461 criminalizes the mailing of any 

“obscene, lewd, lascivious, indecent, filthy or vile article,” 

and § 1462 criminalizes the importation of “obscene, lewd, 

lascivious, or filthy” materials. Nonetheless, in a series of 

opinions in the 1960s and ’70s, the Supreme Court construed this broader language narrowly to apply only to 

obscenity in order to avoid constitutional doubts. See 

Hamling v. United States, 418 U.S. 87, 114 (1974) (limiting § 1461 to obscenity to avoid a vagueness challenge); 

United States v. 12 200-Ft. Reels of Super 8mm. Film, 413 

U.S. 123, 129-30, 130 n.7 (1973) (same with respect to 

§ 1462); Manual Enters., Inc. v. Day, 370 U.S. 478, 482-83 

(1962) (plurality op.) (footnote omitted) (“While in common usage the words have different shades of meaning, 

the statute since its inception has always been taken as 

aimed at obnoxiously debasing portrayals of sex.”). The 

Supreme Court took a similar approach when rejecting an 

overbreadth challenge to a Washington statute that 

defined “prurient” as “that which incites lasciviousness or 

lust,” Brockett v. Spokane Arcades, Inc., 472 U.S. 491, 494 
4 IN RE: BRUNETTI

(1985), construing the statute’s reference to lust to reach 

only obscenity, id. at 504-05.2

As the Supreme Court has done with the obscenity 

statutes, here when faced with constitutional doubt as to 

the immoral-scandalous provision, we should adopt a 

narrowing construction and limit the statute to obscenity.3 As in the earlier Supreme Court cases, there is no 

question that the trademark statute bars registration of

obscene marks. While the statute does not use the word 

“obscene” to define its scope, the absence of the word in 

my view makes a narrowing construction easier rather 

than more difficult, since it suggests that the drafters did 

not use the word “obscene” to differentiate “immoral” and 

“scandalous” material from obscenity.4 And the fact that 

2 I am aware of only one case in which the Supreme 

Court declined to construe similar language as limited to 

obscenity. FCC v. Pacifica Foundation, 438 U.S. 726, 738-

41, 741 n.17 (1978), having arisen in the broadcasting 

context, is quite different from the present situation.

3 Of course, if this were a state rather than federal 

statute, the different standard for narrowing constructions might dictate a different result. See, e.g., Conchatta 

Inc. v. Miller, 458 F.3d 258, 263-65 (3d Cir. 2006).

4 Our predecessor court noted that “the threshold 

for objectionable matter is lower for what can be described 

as ‘scandalous’ than for ‘obscene,’” which suggests that 

any marks meeting the threshold for obscenity would also 

be considered scandalous. In re McGinley, 660 F.2d 481, 

485 n.9 (CCPA 1981), overruled on other grounds by In re 

Tam, 808 F.3d 1321 (Fed. Cir. 2015) (en banc), aff’d, 137 

S. Ct. 1744. To the extent that McGinley supports a 

construction of the immoral-scandalous provision that is 

broader than just obscenity, we are not bound by that 

construction given the constitutional doubts raised in this 

case and the intervening changes in the case law since 

 
IN RE: BRUNETTI 5

the immoral-scandalous provision may appear to be 

broader than obscenity does not preclude our adopting a 

narrowing construction of the statute. Contemporary 

dictionaries from the period before the 1905 enactment of 

the provision suggest that “immoral” and “scandalous”

were understood as equivalent to “obscene.” For example, 

“obscene” was itself listed as a synonym for “immoral.”5

Under these circumstances, we can appropriately narrow the immoral-scandalous provision’s scope to obscene 

that 1981 decision, including Tam. See, e.g., Troy v. 

Samson Mfg. Corp., 758 F.3d 1322, 1326 (Fed. Cir. 2014).

5 Immoral, Webster’s Collegiate Dictionary (1898); 

Immoral, Webster’s Complete Dictionary (1886). In addition, all three words were defined in terms of giving 

offense to morals, and “obscene” and “immoral” were

specifically defined in opposition to chastity. Immoral, 

Webster’s Collegiate Dictionary (“inconsistent with good 

morals,” “unchaste”); Obscene, id. (“[o]ffensive to chastity”); Scandalous, id. (“[g]iving offense to the conscience or 

moral feelings”); Immoral, Black’s Law Dictionary (1st ed. 

1891) (“[c]ontrary to good morals”); Obscene, id. (“calculated to shock the moral sense of man by a disregard of 

chastity or modesty”); Immoral, Webster’s Complete Dictionary (“[n]ot moral,” “unchaste”); Obscene, id.

(“[o]ffensive to chastity and delicacy”); Scandalous, id.

(“[g]iving offense”). Finally, “immoral” and “obscene” 

shared a number of other synonyms, including “lewd,” 

“impure,” and “indecent.” Immoral, Webster’s Collegiate 

Dictionary (“impure,” “lewd”); Obscene, id. (“indecent; 

impure; lewd”); Immoral, Webster’s Complete Dictionary

(“impure,” “lewd”); Obscene, id. (“[i]mpure,” “indecent,” 

“lewd”); Obscene, Black’s Law Dictionary (“[l]ewd; impure; 

indecent”).

 
6 IN RE: BRUNETTI

marks in order to preserve its constitutionality, and we 

are obligated to do so.6

The majority recognizes that we have an obligation to 

construe statutes to preserve their constitutionality. Maj. 

Op. 38. But the majority provides no plausible reason for 

failure to narrowly construe the language in § 1052(a) to 

avoid the evident problems created by a broader construction. To be sure, as the majority points out, the words 

“immoral” and “scandalous” could have a broader meaning than “obscenity,” a broader meaning fraught with 

constitutional problems. But the potential breadth of the 

language is hardly a reason to reject a narrowing construction; rather, it is the very reason that a narrowing 

construction is appropriate. And the majority offers no 

convincing basis for distinguishing this case from the 

Supreme Court cases, discussed above, narrowing the 

construction of very similar language to obscenity. The 

majority appears to suggest that in those Supreme Court 

cases, the statutory concern with sexual representations 

was evident but that here that connection is absent. In 

fact, the central aim of the immoral-scandalous provision 

in this court’s cases has been sexual material reflected in 

6 We are under this obligation notwithstanding the 

fact that the government has not advocated for such a 

narrowing construction. For example, in Spokane Arcades, the Supreme Court adopted a narrowing construction despite the state officials’ arguments that the statute 

was facially constitutional and not in need of narrowing. 

472 U.S. at 501-05; see also SKF USA, Inc. v. U.S. Customs & Border Prot., 556 F.3d 1337, 1353 (Fed. Cir. 2009) 

(“[T]he government’s arguments [against a saving construction] cannot relieve us of our obligation to construe 

the Byrd Amendment to avoid a finding of unconstitutionality.”).

 
IN RE: BRUNETTI 7

trademarks.7 So too, the vast majority of PTO rejections 

under the immoral-scandalous provision in recent decades 

have related to sex.8 The existence of isolated decisions 

viewing the provision as having a secondary concern with 

non-sexual marks9 cannot make a narrowing construction 

inappropriate. Interestingly, the scholarly analysis of the 

scandalous-immoral provision relied on by the majority

has suggested that an amendment to the statute narrow7 See In re Fox, 702 F.3d 633 (Fed. Cir. 2012) (affirming refusal to register COCK SUCKER mark for 

lollipops); McDermott v. S.F. Women’s Motorcycle Contingent, 240 F. App’x 865 (Fed. Cir. 2007) (per curiam) 

(finding no standing to oppose registration of DYKE 

mark); In re Boulevard Entm’t, Inc., 334 F.3d 1336 (Fed 

Cir. 2003) (affirming refusal to register JACK-OFF 

marks); In re Mavety Media Grp. Ltd., 33 F.3d 1367 (Fed. 

Cir. 1994) (vacating refusal to register BLACK TAIL 

mark); McGinley, 660 F.2d 481 (affirming refusal to 

register mark depicting genitalia).

8 See, for example, Anne Gilson LaLonde & Jerome 

Gilson, Trademarks Laid Bare, 101 Trademark Rep. 1476, 

1510-33 (2011), in which the examples of recent rejections 

are predominantly sexual references.

9 See, e.g., In re Riverbank Canning Co., 95 F.2d 

327 (CCPA 1938) (affirming refusal to register 

MADONNA mark for wine). Although LaLonde and 

Gilson provide other historical examples of prior rejections for religious references, LaLonde & Gilson, supra, at 

1510-13, they also explain that the PTO has since directed 

that rejections based on offense to religion should be 

grounded in the (now-invalidated) disparagement provision rather than the scandalous-immoral provision, see id.

at 1511.

 
8 IN RE: BRUNETTI

ing its scope to obscene marks would preserve the core of 

the provision.10

* * *

The First Amendment does not protect obscene 

speech. E.g., United States v. Williams, 553 U.S. 285, 288 

(2008). Under the narrow construction I have proposed, 

then, the bar on the registration of obscene marks would 

withstand constitutional challenge. If Congress wished to 

expand the scope of § 1052(a), it could enact new legislation, which could then be constitutionally tested. Without 

this saving construction, the majority’s result leaves the 

government with no authority to prevent the registration 

of even the most patently obscene marks.

Because there is no suggestion that Mr. Brunetti’s 

mark is obscene, however, I agree that the decision of the 

Trademark Trial and Appeal Board must be reversed. 

For these reasons, I concur in the judgment.

10 See id. at 1534 (noting that narrowing “immoral” 

and “scandalous” to “obscene” would ensure that the 

provision no longer applies to marks “at the edges of 

scandalousness”).