Court Not Scandalized by "Scandalous" Mark

Timothy J. Lockhart

On December 15, 2017, the U.S. Court of Appeals for the Federal Circuit ruled that scandalous or immoral trademarks are entitled to federal registration notwithstanding the prohibition against such marks in Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a). In re Brunetti, 877 F.3d 1330 (Fed. Cir. 2017). In finding the “scandalous” provision unconstitutional, the court followed the lead of the U.S. Supreme Court, which recently held that the section’s similar prohibition against disparaging marks is unconstitutional.  Matal v. Tam, 137 S. Ct. 1744 (2017).

Applicant Erik Brunetti had appealed the decision of the U.S. Trial and Appeal Board (TTAB) that the mark FUCT as used with clothing was unregisterable under Section 2(a). The TTAB agreed with the U.S. Patent and Trademark Office’s Examining Attorney assigned to the FUCT application that the mark is the phonetic equivalent of the word “f**cked,” the past tense of the verb “f**k,” a vulgar term for sexual intercourse, and therefore barred from registration under the “scandalous” prohibition in Section 2(a).  In re Brunetti, Serial No. 85310960, 2014 WL 3976439 (TTAB August 1, 2014) [not precedential].

The Court of Appeals did not disagree that FUCT is vulgar. In fact, the court expressly held, despite Brunetti’s arguments to the contrary, that the mark is vulgar and therefore covered by the scandalous prohibition.  The court focused on the issue of whether, in light of the Supreme Court’s ruling in Matal v. Tam that THE SLANTS is registerable as the name of an Asian American rock band, the “scandalous” clause is unconstitutional in the same way as the disparagement clause of Section 2(a).  After analyzing the facts and the law, the court held that the “scandalous” clause is an unconstitutional content-based restriction on speech that violates the First Amendment.

First, the court said, federal trademark registration, being fee-funded, is not a government subsidy program; therefore, the “scandalous” clause cannot be a reasonable exercise of the government’s spending power. Second, the court held that trademark registration is not a limited public forum such as a city transit system that can limit the sort of advertisements placed on its vehicles.

Third, the court ruled that the prohibition against the registration of scandalous or immoral marks targets the expressive content of speech, thereby requiring the application of strict scrutiny to the prohibition. The court distinguished between prohibitions targeting a mark’s source-identifying information such as the bar against marks that are merely descriptive or geographically descriptive and the “scandalous” prohibition’s targeting of “a mark’s expressive message, which is separate and distinct from the commercial purpose of a mark as a source identifier.” As the Supreme Court ruled in Tam, a prohibition targeting a mark’s expressive message cannot survive strict scrutiny.

Fourth, the court said the “scandalous” clause “is unconstitutional even if treated as a regulation of purely commercial speech reviewed according to the intermediate scrutiny framework” established in Central Hudson Gas & Electric Corp. v. Public Service Commission, 447 U.S. 557, 563 (1980) (holding that a regulation completely banning an electric utility from running advertisements to promote the use of electricity violates the First and Fourteenth Amendments).

Finally, the court ruled there is no reasonable definition of the terms “scandalous” and “immoral” that could make that portion of Section 2(a) constitutional. The court noted that although obscene speech can be regulated, trademarks can be scandalous or immoral without being obscene.  The majority opinion rejected the suggestion in the concurring opinion that the court “narrow the immoral-scandalous provision’s scope to obscene marks in order to preserve its constitutionality.”  The court said that “[w]hile the legislature could rewrite the statute to adopt such a standard, we cannot.”

The court said that it found “the use of [vulgar] marks in commerce discomforting, and [was] not eager to see a proliferation of such marks in the marketplace.” Nevertheless, the court concluded, “The First Amendment . . . protects private expression, even private expression which is offensive to a substantial composite of the general public.” Because “[t]he 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,” the court ruled that FUCT is not unregisterable under Section 2(a) of the Trademark Act.

How to be prepared for ransomware attacks *

Corina V. San-Marina

Ransomware attacks are a growing and evolving crime threatening the private and public sectors. Ransomware exploits human and technical weaknesses to gain access to an organization’s technical infrastructure to deny access to its own data.

Ransomware is malicious software that infects computers, networks and servers and encrypts the data with a key known only to the hacker until a ransom is paid. Businesses are not generally aware malware has infected their systems until they receive the ransom request (usually in a cryptocurrency, such as Bitcoin).

The most common delivery method of this malware is through phishing emails.

Every business subject to a ransomware attack faces several risks such as loss of valuable data and interruption of workflow by preventing employees from accessing data. This can result in significant economic losses and reputational harm.

Businesses in the health care or financial sector are subject to specific notification requirements under federal or state law if a ransomware attack results in a data breach that involves personally identifiable information of clients and/or employees.


Regardless of size or federal oversight, all businesses should take steps, appropriate to their size, to prevent a ransomware attack, to include:

  • Conducting internal compliance and risk assessments to determine vulnerability to cyberattacks.
  • Developing and implementing policies and procedures required for compliance with federal and state privacy law.
  • Establishing secure data backup protocols to ensure important business records are secure.
  • Lining up outside experts, if necessary, based upon the risk profile of the business, ready to provide assistance if a ransomware attack is successful.
  • Training employees, based on their job responsibilities, explaining the importance of following the business’s internal policies related to electronic security.
  • Conducting due diligence on third-party service providers with access to personal information and sensitive business information.


Even businesses that take steps to prevent a ransomware attack may not be able to stop it. If a business has been attacked, it should activate its contingency or business continuity plans to be able to continue operations while responding and recovering from the attack.

The exact steps to take depend on the nature of the business, but in general include:

  • Assembling a team of experts to investigate the attack. Include independent forensic experts and internal team members in information technology, human resources, legal and management.
  • Preventing additional data loss by taking all the affected equipment offline immediately – but do not turn off any equipment until the forensic investigators arrive. If possible, replace the affected equipment, update credentials and passwords of authorized users and preserve any forensic evidence.
  • Notifying law enforcement.
  • Contacting legal counsel to determine breach notification legal requirements, if the forensic expert determines the attack resulted in a breach of personally identifiable information.

While a ransomware attack may not be prevented, it is very important for businesses of any size to have a plan in place and be ready to execute it in order to minimize additional financial loss.

* As appeared in the December 4, 2017, issue of Inside Business

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