Beebe and Fromer: Study on the Arbitrariness of 2(a) Immoral or Scandalous Refusals

For those who have not had the pleasure of seeing it, I recommend the fascinating and, honestly, fun, new study by Barton Beebe and Jeanne Fromer on the arbitrariness and unpredictability of the U.S. Patent & Trademark Office's refusals of trademarks that are deemed to be "immoral" or "scandalous."

The study, entitled Immoral or Scandalous Marks: An Empirical Analysis, has been posted on SSRN. This paper served as the basis for Professors Beebe and Fromer's amicus brief in Iancu v. Brunetti.

This study follows up on Megan Carpenter and Mary Garner's prior 2015 paper, published in the Cardozo Arts & Entertainment Law Journal and Anne Gilson LaLonde and Jerome Gilson's 2011 article, Trademarks Laid Bare: Marks That May Be Scandalous or Immoral.  

All of these studies come to similar conclusions: there are serious inconsistencies in trademark examiners' application of the Section 2(a) "immoral-or-scandalous" rejection. The Beebe/Fromer study is technically 161 pages long, but it's mostly exhibits, and it's very accessible  – worth at least a read to see some of the examples they give, and to oggle at the bizarre interplay between Section 2(a) "immoral-or-scandalous" refusals and Section 2(d) "likely to confuse with prior registered mark" refusals.

The issue in Brunetti is whether the Section 2(a) "scandalous-or-immoral" refusal is an unconstitutional restriction on free speech under the First Amendment.  The test for determining whether the mark is scandalous or immoral 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."

(6-7) (quoting In re Brunetti, 877 F.3d 1330, 1336 (Fed. Cir. 2017) (citations omitted)).

To assess how the USPTO examiners make this determination (what's "disgraceful," for example?), the Beebe/Fromer study takes advantage of a large amount of empirical data (3.6 million trademark registration applications), and creatively uses the interplay between Section 2(a) "immoral-or-scandalous" refusals and Section 2(d) "likely to confuse with prior registered mark" refusals, to emphasize just how unpredictable and capricious the examiners have been in determining what the general public might find "shocking to the sense of truth, decency," or what not.

In particular, the authors show that

the PTO routinely refuses registration of applied-for marks on the ground that they are immoral or scandalous under § 2(a) and confusingly similar with an already registered mark under § 2(d); in other words, the PTO routinely states that it cannot register a mark because the mark is immoral or scandalous and in any case because it has already allowed someone else to register the mark on similar goods. Furthermore, the PTO arbitrarily allows some applied-for marks to overcome an immoral-or-scandalous refusal while maintaining that refusal against other similar marks. ...

For example, the mark at issue in Brunetti is FUCT for apparel.  Here is what the authors say about this:

In 2009, the PTO refused to register the mark FUK!T in connection with apparel (Class 25) and the operation of an internet website (Class 42) on the bases that the applied-for mark was immoral or scandalous under § 2(a) and confusingly similar under § 2(d) to the recently-registered mark PHUKIT for apparel (Class 25). Similarly, on June 18, 2013, the PTO registered the mark PHUC for apparel (Class 25). Four days before, on June 14, 2013, the PTO sent out an office action refusing to register the mark P.H.U.C. CANCER (PLEASE HELP US CURE CANCER) in connection with apparel (Class 25) on the bases that the mark was immoral or scandalous and confusingly similar to the about-to-be-registered mark PHUC for apparel. At no time during its registration process did the earlier-filed mark PHUC for apparel receive any immoral-or-scandalous refusal....

My brilliant:) Akron Law Trademark Law 2019 students might call this a "Schrödinger’s cat argument" from the USPTO examiners. On the one hand, the mark FUCT is unregisterable because it's 2(a) "scandalous"; but on the other hand, FUCT is unregisterable because we already registered a mark just like it. Doh!

Here is another favorite example, that definitely left me scratching my head and pulling out my Spanish Dictionary (the Urban Dictionary was more helpful):

In 2008, the PTO issued an immoral-or-scandalous refusal to an application for the mark CAJONES for dietary supplements (Class 5). It cited evidence from urbandictionary.com, among other sources, in support of the conclusion that: the proposed mark “CAJONES” means “TESTICLES” or “BALLS” and is thus scandalous because it is a commonly used vulgar slang term for a part of the male genitalia. 

... 

Yet in 2008 the PTO registered the mark CAJONES for party games (Class 28) without any immoral-or-scandalous objection, even though, with authorization from the applicant’s attorney, it amended the application record to include the following translation statement: “The foreign wording in the mark translates into English as drawers, and as a slang term for testicles.” Similarly, in 2005 the PTO issued no immoral- or-scandalous refusal to the mark CAJONES for beer (Class 32) and published the mark. In an office action, the PTO had asked the applicant for a translation of the mark, stating: “The following translation statement is suggested: ‘The English translation of CAJONES is drawers.’”

Beebe and Fromer assert in their SSRN paper that these sorts of inconsistencies support that the 2(a) "immoral-or-scandalous prohibition" is being applied in an arbitrary and viewpoint- discriminatory matter" that violates the First Amendment. (They have a couple of theories for how this works under First Amendment doctrine, see pp. 27-32).

These empirical studies by IP professors are likely to be influential on the outcome of the case. It seems clear the work has already been read by some of the Supreme Court Justices or their clerks.  For instance, as Professor and Dean of University of New Hampshire School of Law Megan Carpenter noted on SCOTUSblog, at oral arguments on Monday, April 15, Justice Gorsouch was

particularly troubled by inconsistencies in acceptances and rejections in the PTO’s application of this provision over time, and the resultant inability to give adequate notice to trademark owners. ... He added that he himself could not “see a rational line” through the refusals and registrations, and asked “is it a flip of the coin?”  

The full transcript reveals even more that suggests the Justices are reading the Beebe/Fromer amicus or other empirical studies. From Justice Gorsuch:

JUSTICE GORSUCH: But I can come up with several that are granted that ... have phonetics along the lines you've described and a couple that have been denied. And what's the rational line? How is a person -- a person who wants to get a mark supposed to tell what the PTO is going to do? Is it a flip of the coin? (p. 21)

From Justice Kavanaugh:

JUSTICE KAVANAUGH: How ...do you deal with the problem of erratic or inconsistent enforcement, which seems inevitable with a test of the kind you're articulating? (p. 16)

As someone who lacks a strong view on whether this provision of the Lanham Act should be struck down as unconstitutional, I am just enjoying hearing the examples...and seeing the Justices squirm a bit:

JUSTICE GORSUCH: I don't want to -- I don't want to go through the examples. I really don't want to do that.
  (Laughter.)
(p. 21)