Professional Documents
Culture Documents
In Re Brunetti - Petition For Rehearing en Banc
In Re Brunetti - Petition For Rehearing en Banc
IN RE BRUNETTI
Page
INTRODUCTION .................................................................................................................. 1
ARGUMENT ............................................................................................................................ 8
CONCLUSION ...................................................................................................................... 15
ADDENDUM
CERTIFICATE OF COMPLIANCE
CERTIFICATE OF SERVICE
TABLE OF AUTHORITIES
Cases: Page(s)
Agency for Int’l Dev. v. Alliance for Open Soc’y Int’l, Inc.,
570 U.S. 205 (2013) .............................................................................................................13
Matal v. Tam,
137 S. Ct. 1744 (2017) ............................................................................. 1, 2, 4, 5, 9, 11, 12
Perry v. McDonald,
280 F.3d 159 (2d Cir. 2001) ...............................................................................................10
Rust v. Sullivan,
500 U.S. 173 (1991) .............................................................................................................12
ii
In re Tam,
808 F.3d 1321 (Fed. Cir. 2016) ................................................................................. 3, 4, 11
Statutes:
Lanham Act:
15 U.S.C. § 1051 et seq. .......................................................................................................... 3
15 U.S.C. § 1052(a) ........................................................................................................... 1, 3
15 U.S.C. § 1052(b)-(e) ......................................................................................................... 3
iii
STATEMENT OF COUNSEL
Whether the statute that withholds the benefits of federal trademark registration from
INTRODUCTION
containing “scandalous” and “immoral” matter ineligible for the benefits of federal
trademark registration. See 15 U.S.C. § 1052(a). This provision requires the U.S.
profanities and graphic sexual images, such as renderings of genitalia or sexual acts.
Many attempts have already been made to register “highly offensive, even shocking,
images” (Op. 41), and if the scandalous-marks provision is invalidated, many more
such registrations, involving even more extreme images, will undoubtedly be sought.
the Supreme Court recently invalidated. See Matal v. Tam, 137 S. Ct. 1744 (2017).
Because the Supreme Court’s Tam decision did not provide a framework for assessing
the constitutionality of viewpoint-neutral limitations on registrability, the panel here
was required to adopt a framework in the first instance. The panel erroneously
was not embraced by either of the lead opinions in Tam. This Court should grant
to provisions delimiting the types of marks eligible for federal registration. Adoption
of the appropriate framework will lead this Court to conclude that the panel erred in
1. Trademark rights exist at common law and the owner of a trademark may
use that mark—and enforce it—even without federal registration. See Tam, 137 S. Ct.
trademark rights with a voluntary federal registration program that provides the
owners of registered marks with certain additional rights and remedies. See id. at 1753.
has made content-based judgments about the kinds of marks that should be eligible
for registration. In the Trademark Act of 1905, Congress provided that certain marks
would not be eligible for federal registration “on account of [their] nature.” Act of
Feb. 20, 1905, ch. 592, § 5, 33 Stat. 724, 725. Among the marks deemed ineligible for
2
When Congress enacted the Lanham Act in 1946 (codified as amended at 15
registrability. Section 2(a) provided in relevant part that the USPTO may not register
excluded marks containing certain “flag[s] or coat[s] of arms,” or the “name, portrait,
and marks which are confusingly similar to other marks, or are merely descriptive of
2. This case arises from a challenge to a decision of the USPTO refusing Erik
Brunetti’s application to register the term “FUCT” for his clothing line. The USPTO
with a well-known expletive. Op. 4-5. Brunetti argued, as relevant here, that the bar
3. While this appeal was pending, this Court issued an en banc decision in Tam,
holding that the portion of Section 2(a) barring registration of disparaging marks is
unconstitutional. See In re Tam, 808 F.3d 1321 (Fed. Cir. 2016). In so doing, the
Court concluded that the disparagement clause should be subject to strict scrutiny. Id.
1
Although the statute separately bars registration of “scandalous” and
“immoral” marks, the USPTO has long treated the two terms as composing a single
category.
3
at 1339. Among other things, the Court rejected the government’s argument that the
trademark program is properly analyzed as a government subsidy for marks that meet
federal registration criteria. Id. at 1348-55. The Court recognized that its reasoning
might cast doubt on other provisions in Section 2 of the Lanham Act, including the
clause. Id. at 1330 n.1. In light of the breadth of this Court’s reasoning, the
government filed a notice in Brunetti stating that it could not continue to defend the
scandalous-marks provision under this Court’s law, but that the disparagement
provision and the scandalous-marks provision need not rise and fall together. Op. 11.
The government petitioned for certiorari in Tam and the case was heard by an
eight-member Supreme Court. The Supreme Court unanimously held that the
federal registration confers important legal rights and benefits and that the trademark
registration program is not government speech. Tam, 137 S. Ct. at 1757-60. But the
remainder of the Court’s analysis was split between two opinions, neither of which
secured a majority.
Justice Alito, writing in relevant part for four Justices, rejected the
under the framework applicable to government subsidies. Tam, 137 S. Ct. at 1760-61.
Justice Alito further concluded that the disparagement provision discriminates based
the standard applicable to restrictions on commercial speech, and concluded that the
disparagement provision could not be sustained because it was not sufficiently tailored
narrower grounds. These Justices did not join Justice Alito in rejecting the
questions raised by the parties.” Tam, 137 S. Ct. at 1765. Justice Kennedy found it
the Lanham Act should be analyzed under the First Amendment.” Id. at 1768.2
marks provision in this case. After supplemental briefing, the panel issued a divided
2
Justice Thomas wrote separately to note, as relevant here, his view that
restrictions on commercial speech should not be subjected to less searching review
than other forms of speech regulation. Tam, 137 S. Ct. at 1769.
5
opinion, concluding that the scandalous-marks provision facially violates the First
Amendment. The panel accepted the premise that neither the Supreme Court’s Tam
decision nor this Court’s en banc decision in that case was dispositive of the issue
here. Cf. Dyk Op. (concurring in the judgment) (“I agree with the majority that the
Supreme Court’s recent decision in Matal v. Tam does not dictate the facial invalidity
panel concluded that it did not need to reach the question of viewpoint discrimination
Op. 13-14.
The panel then rejected the government’s argument that the trademark
government wishes to promote. Op. 14-20. The panel distinguished cases in which
the government has been allowed to define the scope of a governmental program,
3
The government argued that this Court’s Tam decision was no longer binding
because it had been superseded by the Supreme Court’s narrower decision in the case.
See Troy v. Samson Mfg. Corp., 758 F.3d 1322, 1326 (Fed. Cir. 2014). The panel
“question[ed]” that argument, but concluded that it did not need to decide the issue
because it would independently reach the same conclusions reached by the en banc
court in Tam. Op. 16 n.1.
6
concluding that government subsidy precedents do not apply outside the context of
The panel likewise rejected the relevance of limited public forum precedents,
concluding that they are only applicable when the government restricts speech on its
own property. Op. 22. The limitation on trademark registration, the panel found,
affects speech in commerce generally. Op. 24. The panel thus analyzed the
marketplace. The panel also concluded that the scandalous-marks provision regulates
speech based on its expressive (and not just commercial) content, and is not related to
26-28. This led the panel to conclude that strict scrutiny applied, which the provision
could not withstand the laxer review applicable to commercial speech. Op. 28-38.
The panel stated that the government has no legitimate substantial interest in
registration of such marks does not associate the government with those marks and
Op. 28-34. The panel further determined that refusing to register those marks does
not advance a substantial government interest because such refusal would not
meaningfully affect the prevalence of similar terms and images in society at large. Op.
7
34-35. Finally, the panel found that refusal to register those marks was not
of scandalous marks as applicable only to obscene material that falls wholly outside
the protection of the First Amendment. Dyk Op. 2 n.1. Under such a construction,
suggestion that Mr. Brunetti’s mark is obscene”—rather than merely scandalous. Dyk
Op. 8.
ARGUMENT
The government respectfully requests that the Court grant rehearing en banc.
The panel’s decision to facially invalidate a statutory requirement that has been a
feature of federal trademark law for more than a century is of exceptional importance.
The panel’s reasoning, which applied strict scrutiny to a limitation on the voluntary
trademark registration program, sweeps far more broadly than the approaches
adopted by Justice Alito and Justice Kennedy in Tam, wrongly equates the denial of a
trademark registration with a direct regulation on speech, and fails to recognize the
governmental program.
8
1. As the panel recognized, the decision to invalidate the scandalous-marks
provision was not a mere application of the Supreme Court’s holding in Tam. No
of the Supreme Court in Tam, so Justice Kennedy’s opinion supplies the controlling
rule of law because it is the “narrowest holding among the plurality opinions.”
AFTG-TG, LLC v. Nuvoton Tech. Corp., 689 F.3d 1358, 1363 (Fed. Cir. 2012) (per
curiam). Justice Kennedy’s narrow opinion turned on his conclusion that the
analyzed under the First Amendment.” Tam, 137 S. Ct. at 1768. Indeed, Justice Alito
also emphasized that the disparagement clause was viewpoint discriminatory and
concluded that invalidation of the disparagement clause thus did not require the
neutral. It denies federal registration of sexual and excretory terms and images to all
commercial actors and does not exclude expression on only one side of “an otherwise
includible subject.” Tam, 137 S. Ct. at 1766 (Kennedy, J.). The panel expressed doubt
as to whether the scandalous-marks provision is truly viewpoint neutral (Op. 13), but
ultimately did not break with the significant body of precedent holding that
restrictions on the use of profanity and sexual images are viewpoint neutral. See, e.g.,
9
Perry v. McDonald, 280 F.3d 159, 170 (2d Cir. 2001) (prohibition on using
“combination of letters that stands in part for the word ‘shit’ . . . does not
discriminate on the basis of viewpoint”); General Media Commc’ns, Inc. v. Cohen, 131 F.3d
273, 276 (2d Cir. 1997) (“Congress has regulated . . . a particular subject matter—
those reflecting particular viewpoints.”); id. at 280-82; PMG Int’l Div., LLC v. Rumsfeld,
303 F.3d 1163, 1171 (9th Cir. 2002) (similar); see also Bethel Sch. Dist. No. 403 v. Fraser,
478 U.S. 675, 685 (1986) (describing “lewd and indecent speech” that was “unrelated
Because the Supreme Court did not provide a framework for analyzing
Drawing on Reed v. Town of Gilbert, 135 S. Ct. 2218, 2226 (2015), the panel declared
and that the scandalous-marks provision must be treated as such a speech restriction.
Op. 13-14. This logic sweeps far beyond anything endorsed by either Justice
4
Justice Thomas did endorse strict scrutiny. But his logic was based entirely on
views that are contrary to Supreme Court precedents that remain binding on this
Court.
10
standing feature of trademark law, including in provisions that have never been
Court’s en banc decision in Tam concluded that “[b]ecause § 2(a) discriminates on the
basis of the content of the message conveyed by the speech, it follows that it is
presumptively invalid, and must satisfy strict scrutiny to be found constitutional.” See
In re Tam, 808 F.3d 1321, 1339 (Fed. Cir. 2015) (en banc). The unwillingness of even
a single Supreme Court Justice to embrace that aspect of this Court’s reasoning, even
as the Supreme Court affirmed this Court’s judgment, underscores the need for this
Court to reexamine the issue and consider whether a less sweeping framework is
warranted.
because it does not accurately describe how the trademark registration program
functions. As the panel recognized, Reed applies when the government “restricts
speech.” Op. 13; see also Reed, 135 S. Ct. at 2226. But the refusal to federally register a
trademark does not prevent a mark owner from using that mark in commerce. Tam,
137 S. Ct. at 1751-52. Brunetti has used his mark without federal interference since
1990. Op. 4. Reed involved a restriction on the display of signs, and not a context like
this one, in which no affirmative burden is imposed on any speech. Extending Reed to
this context would be a novel and unjustified innovation, and would have potentially
sweeping implications.
11
The Supreme Court has created a different legal framework that is specifically
designed to apply to circumstances, like these, where the government offers selective
benefits to favored speakers. See Davenport v. Washington Educ. Ass’n, 551 U.S. 177,
188-89 (2007) (recognizing “it is well established that the government can make
content-based distinctions when it subsidizes speech”); Rust v. Sullivan, 500 U.S. 173,
192-94 (1991); Regan v. Taxation with Representation of Wash., 461 U.S. 540, 549 (1983).
While Justice Alito rejected the applicability of this case law in Tam, he conspicuously
failed to command a majority on this point. 137 S. Ct. at 1760-62. And in any case,
Justice Alito still did not adopt the Reed framework, instead suggesting that the best
analogy might be a limited public forum, where some content-based limitations would
The panel here rejected both the government subsidy and the limited public
forum frameworks. Op. 14-26. As its basis for rejecting the subsidy framework, the
panel concluded that the framework applies only where the government is directing
the use of federal funds. Op. 17-20. But this reasoning is difficult to reconcile with
Davenport, a case the panel did not acknowledge, which drew on government subsidy
case law to uphold a program that did not provide private parties with governmental
funds. See 551 U.S. at 189. Moreover, the trademark registration program is
funds. The same analytic framework should apply when the government spends
12
money to provide private groups with valuable resources as when the government
A holding from this Court that the trademark registration program should be
analyzed as a selective benefit would not place the program beyond constitutional
scrutiny. As Justice Kennedy’s Tam opinion explained, the government would still be
doctrine would also provide robust protection against any attempt by the government
contours” of the program. See Agency for Int’l Dev. v. Alliance for Open Soc’y Int’l, Inc., 570
Op. 16. Had it done so, it would have been forced to conclude that the scandalous-
marks provision is permissible because it applies only to the very marks the applicant
does not bar the applicant from engaging in any other speech in the world at large.
one, the panel also did not follow Justice Alito’s approach, rejecting his analogy
between the federal trademark registration program and a limited public forum. Op.
24-25. In doing so, the panel repeated the fundamental error that underlies its
rejection of the subsidy framework, concluding that “registration and use of registered
13
trademarks simply does not fit within the rubric of public or limited public forum
cases.” Op. 24 (emphasis added). This case involves only registration, not use, and
the panel’s failure to appreciate the significance of that distinction led it to adopt the
wholly different, and lesser, magnitude than the interest in untrammeled political
debate.” City of Renton v. Playtime Theatres, Inc., 475 U.S. 41, 49 n.2 (1986); see also FCC
v. Fox Television Stations, Inc., 556 U.S. 502, 529 (2009) (recognizing that “references to
excretory and sexual material surely lie at the periphery of First Amendment
concern”) (quotation marks omitted). The panel’s decision here would force the
government to register “highly offensive, even shocking, images” and profanities that
The panel declared that “the government does not have a substantial interest in
protecting the public from scandalousness and profanities,” and that the scandalous-
marks provision cannot advance any governmental interest because “[i]n this
electronic/Internet age, to the extent that the government seeks to protect the general
5
A sampling of the graphic images that have been submitted to the USPTO for
registration can be found in the Addendum to the government’s supplemental brief.
14
population from scandalous material, with all due respect, it has completely failed.”
Op. 33, 35. But the fact that lewd material is universally accessible to those who seek
it out should not mean that the government is required to actively promote the use of
nationwide constructive notice of the registrant’s claim of ownership in the mark and
registrants to use the ® symbol, and working with other countries’ governments to
facilitate international protection of the mark. While the government generally cannot
imagery from non-public and limited public fora. A city government might provide,
for instance, that graphic sexual imagery may not appear on advertisements on city
cemetery. If the panel were correct that the government has no legitimate interest in
protecting the public from scandalous images (Op. 33), such reasonable regulations
CONCLUSION
For the foregoing reasons, this Court should rehear this case en banc.
15
Respectfully submitted,
16
ADDENDUM
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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 government-
imposed 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 valua-
ble 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 Amend-
ment rights even if the program involves Congress’ au-
thority 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 organiza-
tions 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
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I hereby certify that this petition complies with the requirements of Federal
Rule of Appellate Procedure 32(a)(5) and (6) because it has been prepared in 14-point
Garamond, a proportionally spaced font. I further certify that this petition complies
with the word limitation of Federal Rule of Appellate Procedure 35(b)(2)(A) because
it is 3,626 words, excluding the parts exempted under Circuit Rule 35(c)(2).
/s/Joshua M. Salzman
JOSHUA M. SALZMAN
CERTIFICATE OF SERVICE
I hereby certify that on February 12, 2018, I electronically filed this petition
with the Clerk of the Court for the United States Court of Appeals for the Federal
Circuit by using the appellate CM/ECF system. I further certify that I will cause 18
paper copies to be filed with the Court within two days unless another time is
specified by the Court, in accordance with Circuit Rule 35(c)(4) and this Court’s
The participants in the case are represented by registered CM/ECF users and
/s/Joshua M. Salzman
JOSHUA M. SALZMAN