Immoral or Scandalous Marks: An Empirical Analysis

" Immoral or Scandalous Marks: An Empirical Analysis ," 8 NYU Journal of Intellectual Property & Entertainment Law 169 (2019) (with Barton Beebe)

"Immoral or Scandalous Marks: An Empirical Analysis," 8 *NYU Journal of Intellectual Property & Entertainment Law* 169 (2019) (with Barton Beebe)

Barton Beebe & Jeanne C. Fromer, Immoral or Scandalous Marks: An Empirical Analysis, 8 N.Y.U. J. Intell. Prop. & Ent. L. 169 (2019)

Village  Hoffman Estates v. Flipside, Hoffman Estates, Inc.

Greater New Orleans Broadcasting Ass' v. United States

The Lanham Act sets forth which trademarks may be registered at the Patent and Trademark Office. 1 It contains a number of limitations on registrability. Section 2(a) prohibits among other things the registration of a mark 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." 2 This provision originally came into force in 1946 with the enactment of the Lanham Act, but the consisted of immoral-or-scandalous matter, though 140 applications eventually overcame that refusal and 91 proceeded to registration. We show that the PTO applies the immoral-or-scandalous prohibition in an arbitrary and viewpointdiscriminatory matter. Specifically, we 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. The PTO also often declines even to issue immoral-or-scandalous refusals to applied-for marks that are closely similar to other marks to which it has issued such refusals. Finally, the PTO uses the § 2(a) immoral-or-scandalous bar to refuse registration of marks whose viewpoint on such practices as drug-taking it finds objectionable. On the basis of these empirical findings, we conclude that the § 2(a) bar on the registration of immoral-or-scandalous matter violates the Free Speech Clause and is unconstitutional. As a preliminary matter, many of the marks subject to an immoral-or-scandalous refusal are instances of high-value speech. Section 2(a)'s immoral-or-scandalous-marks provision fails to satisfy even the "intermediate scrutiny" applied to commercial speech under Central Hudson Gas & Electric Corp. v. Public Service Commission of New York 9 because it is not narrowly drawn and is arbitrarily applied. Furthermore, the provision is unconstitutionally vague and has been applied in a viewpoint-discriminatory manner. Part I provides background on Tam and Brunetti. Part II describes the datasets we used for our study. Part III presents various descriptive statistics. Part IV shows from a number of perspectives the degree to which the PTO's application of the immoral-or-scandalous bar is arbitrary. Part V focuses on how the PTO has engaged in viewpoint discrimination in applying the immoral-or-scandalous bar. Part VI analyzes the implications of our findings under the First Amendment. In conclusion, we briefly raise some thoughts about the use of big data in litigation to show inconsistent application of laws. Immoral, 101 TRADEMARK REP. 1476, 1478 (2011). They too find inconsistences in the PTO's treatment of the term. See id. at 1478 (reporting that twenty of the applications containing MILF that they studied received an immoral-or-scandalous refusal, while twenty did not, and concluding that "[c]learly, the USPTO cannot make up its mind"). 9 447 U.S. 557 (1980). Before we proceed, we note (and caution the reader) that many of the trademark applications we discuss contain offensive language. But we think including them, unfiltered, is necessary to report the specifics of these applications to properly convey just how arbitrary and viewpoint-discriminatory the PTO's enforcement of the immoral-or-scandalous bar has been. I THE LEAD-UP TO IANCU V. BRUNETTI A. Matal v. Tam In November 2011, Simon Tam, the founder, bassist, and frontman of The Slants, applied to register the mark THE SLANTS on the Principal Register in connection with "[e]ntertainment in the nature of live performances by a musical band." 10 The PTO refused registration on the ground that the term was disparaging of Asian persons. 11 On appeal to the U.S. Court of Appeals for the Federal Circuit, Tam explained that he "select [ed] the name 'The Slants' to 'reclaim' and 'take ownership' of Asian stereotypes. The band draws inspiration for its lyrics from childhood slurs and mocking nursery rhymes, and its albums include 'The Yellow Album' and 'Slanted Eyes, Slanted Hearts.'" 12 He argued, among other things, that the § 2(a) prohibition on "matter which may disparage" violated the Free Speech Clause. 13 Reasoning that it was bound by precedent, the Federal Circuit initially rejected his constitutional challenge. 14 Judge Kimberly Moore joined the opinion but added a lengthy opinion of her own under the heading "additional views," in which she urged the Federal Circuit to reconsider its precedent on the issue. 15 In a subsequent en banc decision, the Federal Circuit adopted Judge Moore's reasoning and found the § 2(a) disparagement bar to be facially unconstitutional under the Free Speech Clause. 16 The Supreme Court affirmed by an eight-member court, unanimously finding the provision to be unconstitutional. 17 In a plurality opinion joined by Chief Justice Roberts, Justice Thomas, and Justice Breyer, Justice Alito found that "the disparagement clause" of § 2(a) failed to satisfy even intermediate scrutiny under Central Hudson. 18 This determination allowed him to avoid the question of whether trademarks, as commercial speech, should be subject to either intermediate or strict scrutiny. 19 Justice Alito focused on Central Hudson's requirement that a restriction of speech be "narrowly drawn." He explained: [T]he disparagement clause is not "narrowly drawn" to drive out trademarks that support invidious discrimination. The clause reaches any trademark that disparages any person, group, or institution. It applies to trademarks like the following: "Down with racists," "Down with sexists," "Down with homophobes." It is not an antidiscrimination clause; it is a happy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted. 20 Justice Alito further expressed a concern that [t]he commercial market is well stocked with merchandise that disparages prominent figures and groups, and the line between commercial and non-commercial speech is not always clear. If affixing the commercial label permits the suppression of any speech that may lead to political or social "volatility," free speech would be endangered. 21 However, Justice Alito did not elaborate on the contours of this concern. In a concurring opinion joined by Justice Ginsburg, Justice Sotomayor, and Justice Kagan, Justice Kennedy found that § 2(a) constituted viewpoint discrimination and failed strict scrutiny. 22 Justice Kennedy explained: "[A]n applicant may register a positive or benign mark but not a derogatory one. The law thus reflects the Government's disapproval of a subset of messages it finds offensive. This is the essence of viewpoint discrimination." 23 As for the commercial speech issue, " [t]o the extent trademarks qualify as commercial speech, they are an example of why that category does not serve as a blanket exemption from the First Amendment's requirement of viewpoint neutrality." 24 Justice Thomas wrote a separate concurrence to register his view that strict scrutiny should be applied "whether or not the speech in question may be characterized as 'commercial.'" 25 Erik Brunetti founded the clothing line "fuct" in 1990. 26 In May 2011, two individuals applied to register the mark FUCT in connection with apparel on the PTO's Principal Register. They subsequently assigned the application to Brunetti. The PTO refused registration on the ground that the mark consisted of "immoral . . . or scandalous matter" under § 2(a). 27 The examining attorney and Trademark Trial and Appeal Board applied the standard test to determine if an applied-for mark is immoral or scandalous. 28 This test "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." 29 On appeal, the Federal Circuit found in favor of Brunetti. 30 Writing six months after the Supreme Court decided Tam, Judge Moore ruled that the PTO had not erred in concluding that FUCT is immoral or scandalous but found that the immoral-or-scandalous prohibition violated the Free Speech Clause. Specifically, she held that the prohibition targeted the expressive content of applied-for marks, constituted content-based discrimination, and did not satisfy strict scrutiny. 31 She further held that the immoral-or-scandalous bar failed to pass even intermediate scrutiny under Central Hudson. 32 The Central Hudson analysis of the constitutionality of governmental restrictions on commercial speech has four prongs: At the outset, we must determine whether the expression is protected by the First Amendment. For commercial speech to come within that provision, it at least must concern lawful activity and not be misleading. Next, we ask whether the asserted governmental interest is substantial. If both inquiries yield positive answers, we must determine whether the regulation directly advances the governmental interest asserted, and whether it is not more extensive than is necessary to serve that interest. 33 With respect to the second prong of the Central Hudson test, she found that the government's interest in protecting citizens from profanities was not "substantial." 34 With respect to the third prong, she found that the immoral-orscandalous bar did not directly advance this interest because firms can still use applied-for marks in commerce even if their application is refused. 35 Finally, and we think most importantly, Judge Moore also found that the § 2(a) immoral-orscandalous prohibition failed the fourth prong of the Central Hudson test ("whether [the provision at issue] is not more extensive than is necessary to serve that interest" 36 ). She explained: [N]o 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.' Nearly identical marks have been approved by one examining attorney and rejected as scandalous or immoral by another. . . . 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. 37 32 Id. 33 Central Hudson Gas & Elec. Corp. v. Public Serv. Comm'n of N.Y., 447 U.S. 557, 566 (1980). 34 Brunetti, 877 F.3d at 1350-53. 35 Id. at 1353. 36 Central Hudson, 447 U.S. at 566. 37 Brunetti, 877 F.3d at 1353-54 (quoting Reno v. Am. Civil Liberties Union, 521 U.S. 844, 871 (1997)); cf. Matal v. Tam, 137 S. Ct. 1744, 1756-57 (2017) (acknowledging that that "the huge volume of [trademark] applications have produced a haphazard record of enforcement" of We used two datasets to analyze how the PTO has applied the § 2(a) immoralor-scandalous prohibition. The first is the PTO's Trademark Case Files Dataset, which provides detailed information about all 7.3 million trademark applications for registration on the Principal Register filed from 1982 through 2017. This dataset includes data on applicant and mark characteristics, as well as applications' prosecution history. 38 Unfortunately, although the dataset indicates if the PTO refused registration of an application, the dataset does not indicate the PTO's grounds for its decision. To establish on what basis the PTO refused registration, we used a second dataset of all office actions issued by the PTO from 2003-when the PTO first began to post its trademark office actions online-through 2017. We developed this dataset in connection with a previous study, and have since updated it. 39 This entailed systematically downloading some 3.1 million office actions from the PTO website. We then used keywords and key phrases to autocode the office actions for certain characteristics. Most relevant for our purposes here, we autocoded the office actions for whether the PTO refused registration on the basis that the applied-for mark was immoral or scandalous under § 2(a) or on the basis that the applied-for mark was confusingly similar to an already-registered mark under § 2(d) of the Lanham Act. 40 Because of the significant computational challenges presented by the analysis of trademark applications for marks consisting only of images, we restrict our analysis here only to word-mark applications. During the period studied, 97% of trademark applications submitted to the PTO were for marks that consisted in whole the disparagement provision, and that "today, the principal register is replete with marks that many would regard as disparaging to racial and ethnic groups"). The Supreme Court has elsewhere made clear that when "[t]he operation of [a law] is so pierced by exemptions and inconsistencies . . . the Government cannot hope to exonerate it" under the fourth prong of Central Hudson. Greater New Orleans Broadcasting Ass'n v. United States, 527 U.S. 173, 190 (1999); cf. Rubin v. Coors Brewing Co., 514 U.S. 476, 489 (1995) ("[E]xemptions and inconsistencies [in an alcohol labeling ban] bring into question the purpose of the labeling ban."). 38 U.S. PATENT & TRADEMARK OFFICE, TRADEMARK CASE FILES DATASET (2018), https://www.uspto.gov/learning-and-resources/electronic-data-products/trademark-case-files-dataset-0. 39 or part of text. Furthermore, even though we have data through 2017, we study the thirteen-year period from 2003 through 2015 because applications filed after that period may not been fully processed by the end of 2017. As stated above, of the 3.6 million word-mark applications filed at the PTO for registration on the Principal Register from 2003 through 2015, 1,901 applications were issued refusals to register on the basis that the applied-for mark was immoral or scandalous. For context, Figure 1 shows the number of word-mark applications filed at the PTO by year from 2003 through 2015. Figure 2 shows, by filing year, the number of word-mark applications that received a § 2(a) immoral-or-scandalous refusal 41 and the number that overcame that refusal during the period studied. 42 41 An initial rough analysis of correlations between the frequency with which specific examiners issued an immoral-or-scandalous refusal and examiner characteristics, such as gender and seniority, shows no appreciable correlations. For example, for the period 2003 through 2015, we were able to estimate examiners' gender (based on first names) for 3,503,978 (or 96.5%) of the 3,631,515 word-mark applications filed. Female examiners evaluated 57.3% of these 3.5 million applications and issued 59.7% of the 1,854 immoral-or-scandalous refusals, r=-0.001, n = 3,503,978, p = 0.038. 42 The trademark registration process begins when the applicant files an application identifying, among other things, the mark for which the applicant seeks registration and the goods or services with which the applicant currently uses the mark or intends in the future to use the mark. The PTO then examines the application for compliance with formalities and to determine if there are any grounds for refusal to register the mark, such as that the mark is immoral or scandalous under § 2(a) or that the mark is confusingly-similar to an already-registered mark under § 2(d). If the PTO determines that the application complies with all formalities and that there are no grounds for refusal, the PTO then publishes the mark in the Trademark Official Gazette. At this stage, the PTO has essentially declared that as far as it is concerned, the mark is ready to be registered (though in rare instances, the PTO will sometimes issue a refusal even after the mark has published). Any party which believes it may be harmed by registration of the mark then has thirty days to oppose registration of the mark. With respect to applications based on the applicant's current use of the trademark, if no opposition is filed or if the mark is unsuccessfully opposed, the mark then proceeds to registration. With respect to applications based on the applicant's intent to use the mark, the applicant must then submit evidence that it is using the mark in commerce. Upon receipt of such evidence, the PTO then registers the mark. Figure 4 classifies all word-mark applications that received a § 2(a) immoralor-scandalous refusal from 2003 through 2015 by the type of purported immorality or scandalousness that the applied-for mark primarily involved. In many instances, specific applications involved multiple forms of immorality or scandalousness. Figure 4 classifies each application into the one category of immorality or scandalousness that was most implicated by the applied-for mark. For example, this scheme classifies an application for PHAT FUK in connection with apparel (Class 25) as primarily a vulgar expletive; 44 an application for GOD IS GAY in connection with games and other articles (Class 28) as primarily blasphemous; 45 and an application for WHOREABUSE.COM in connection with online adultentertainment services (Class 41) as primarily violent. 46 Admittedly, this classification scheme is sometimes highly subjective. We begin with what we believe is the strongest evidence that the PTO applies the immoral-or-scandalous prohibition arbitrarily and inconsistently. While § 2(a) prohibits the registration of a mark that "[c]onsists of or comprises immoral . . . or scandalous matter," § 2(d) prohibits the registration of a mark that "[c]onsists of or 44 See U.S. Trademark Application Serial No. 77/231,275 (filed July 17, 2007). 45 See U. S. Trademark Application Serial No. 78/435,907 (filed June 16, 2004). 46 See U. S. Trademark Application Serial No. 77/352,574 (filed Dec. 14, 2007). comprises a mark which so resembles a mark registered in the Patent and Trademark Office . . . as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive." 47 Remarkably, the PTO routinely issues refusals to the same application on the twin bases that the applied-for mark is immoral or scandalous under § 2(a) and that the applied-for mark is confusingly similar to an already-registered mark under § 2(d). In each of these cases, the PTO stated that the mark was immoral or scandalous and thus could not be registered-and that the PTO had already registered a highly similar mark on highly similar goods or services. By its own admission, therefore, the PTO is making a large number of inconsistent applications of the § 2(a) prohibition on the registration of immoral-or-scandalous marks-and often just a short time apart. 48 Consider some examples of applications for marks that are similar to Brunetti's mark FUCT. 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). 49 Similarly, on June 18, 2013, the PTO registered the mark PHUC for apparel (Class 25). 50 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 47 15 U.S.C. § 1052(d) (2012). 48 The examining attorney must provide all non-use-related grounds for refusal in the first office action. See TRADEMARK MANUAL OF EXAMINING PROCEDURE, supra note 43, § 704.01 (stating that "[t]he examining attorney's first Office action must be complete, so the applicant will be advised of all requirements for amendment and all grounds for refusal," but noting that userelated issues may be raised later in the application process). However, additional non-use-related grounds for refusal may be raised in subsequent office actions if failing to do so "would result in clear error," though "[e]xamining attorneys should exercise great care to avoid these situations." Id. § 706. 49 U.S. 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 earlierfiled mark PHUC for apparel receive any immoral-or-scandalous refusal. 51 The PTO has done this repeatedly-i.e., given different treatment to the same (or nearly same) F-word variant, for use on the same kind of goods. For example, the PTO registered F U 2 for apparel, but barely two years later refused to register F.U. for apparel because it was both immoral and confusingly similar to the registered mark F U 2. 52 Similarly, the PTO registered FVCK STREET WEAR for apparel, but then two years later refused to register FVCKD because it was both scandalous and confusingly similar to an already-registered mark. 53 51 U.S. Trademark Application Serial No. 85/855,531 (filed Feb. 20, 2013) Trademark Application Serial No. 86/533,866 (filed on Feb. 12, 2015) sought to register the mark F.U. in connection with apparel (Class 25). In an office action dated May 26, 2015, the PTO refused registration on the bases that the applied-for mark was immoral or scandalous and confusingly similar to the mark in U.S. Trademark Application Serial No. 86/808,278 (filed Nov. 3, 2015) sought to register the mark FVCKD in connection with apparel (Class 25). In an office action dated August 26, 2016, the PTO refused registration on the bases that the applied-for mark was immoral or scandalous and confusingly similar to the mark FVCK STREET WEAR, Registration No. 4,515,888, There is a wide range of marks for which these twin refusals occur, well beyond those that are variations on Brunetti's applied-for mark. As illustration, the PTO has asserted in office actions that each of the following marks both contravenes the immoral-or-scandalous-marks provision and is confusingly similar to an alreadyregistered mark: • MILF SEEKER for online entertainment services, immoral or scandalous and confusingly similar to the recently-registered mark MILFHUNTER for online entertainment services; • MIDDLEFINGER for apparel, immoral or scandalous and confusingly similar to the recently-registered mark JONNY MIDDLEFINGER for bags and apparel; 57 • BANGBOAT for online adult-entertainment services, immoral or scandalous and confusingly similar to the recently-registered mark BANGBUS for online adult-entertainment services; 58 • FAT COCK BEER for beer, immoral or scandalous and confusingly similar to the recently-registered mark RED COCK BEER for beer; 59 • CAMEL TOES for apparel, immoral or scandalous and confusingly similar to the already-registered mark CAMEL TOES for apparel. 60 These twin refusals also occur with regard to marks containing non-English words. Consider the following examples, both in Spanish: • PINCHE TAQUERIA (translated by the PTO in its § 2(a) refusal as "fucking taco stand") for food services (Class 43), immoral or scandalous and confusingly similar to an application filed nine days earlier for PINCHES TACOS for food services (Class 43), which received no immoral-or-scandalous refusal and was subsequently registered; 61 (Class 43). In an office action dated October 20, 2008, the PTO refused registration of the PINCHE TAQUERIA mark on the bases that it was immoral or scandalous and confusingly similar to the earlier-filed PINCHES TACOS mark. Because the earlier-filed application had not yet been published and registered, the PTO's office action noted that "a potentially conflicting mark in a prior-filed pending application [the earlier-filed application] may present a bar to registration," and that "[i]f the referenced application registers, registration may be refused in this case under Section 2(d Appendix 2 sets forth, by filing year, all 114 trademark applications filed from 2003 through 2015 that were refused registration (and failed to publish) on the bases that the applied-for mark was immoral or scandalous under § 2(a) and confusingly similar under § 2(d) to a mark that the PTO had already registered or at least already approved for publication in the Official Gazette. 63 This appendix shows more comprehensively what these examples illustrate: that the PTO has acted inconsistently in issuing immoral-or-scandalous refusals to a wide range of wordsfrom commonly used profanities like FUCK and its variations, to a slew of less widespread words-suggesting that the inconsistent treatment is broad and irremediable. These inconsistencies cannot be explained away as merely the result of the marks at issue being used in different contexts. 64 This is precisely because in these ACTION (Feb. 15, 2007), https://tsdr.uspto.gov/documentviewer?caseId=sn77060638&docId=OOA20070215130435#docI ndex=5&page=1. 63 We do not include in this list trademark applications that received twin refusals for being immoral or scandalous and for being confusingly similar when the confusing similarity related to a different aspect of the mark than the one the PTO found immoral or scandalous. For example, with regard to the trademark application for ADIOS M.F. for alcoholic cocktail mixes (Class 33), see U. S. Trademark Application Serial No. 77/560,340 (filed Sept. 2, 2008), the PTO, on December 8, 2008, refused the application on the ground that the mark was immoral or scandalous for meaning "goodbye motherfucker," and also that it was confusingly similar to registered mark ADIOS AMIGO, Trademark Registration No. 3,262,700, registered July 10, 2007, 14, 2003), the PTO, on January 28, 2004, refused the application on the ground that the mark was immoral or scandalous for "contain[ing] the term 'sh!t' which purchasers would readily recognize as the term 'shit," and also that it was confusingly similar with registered mark URBAN RENEWAL, Trademark Registration No. 2,412,456, registered Dec. 12, 2000, for apparel (Class 25). U.S. PAT. & TRADEMARK OFFICE, U.S. DEP'T OF COMMERCE, U.S. Trademark Application Serial No. 78/274,095, OFFICE ACTION (Jan. 28, 2004), https://tsdr.uspto.gov/documentviewer?caseId=sn78274095&docId=OOA20040128164634#docI ndex=2&page=1. In these instances, a twin refusal does not suggest inconsistency on the part of the PTO in application of the immoral-or-scandalous-marks provision. 64 See Brief for Petitioner at 45-46, Iancu v. Brunetti, 139 S. Ct. 782 (Jan. 4, 2019) (No. 18-302) (arguing that the PTO treats similar marks differently because of differing "meaning in relation to the particular goods and services for which registration is sought" and "change[s in attitudes] over time"). situations of twin refusals, the PTO asserted that the applied-for mark was immoral or scandalous and contextually similar enough to the already-registered mark that consumer confusion would result. 65 Moreover, the PTO issued these twin refusals against applied-for marks whose application dates were close in time to the publication and registration dates of the earlier-filed marks that the PTO cited as the basis for its confusing similarity refusals under § 2(d). This indicates that changing attitudes cannot explain these inconsistencies. Sometimes the PTO refuses to register a mark as immoral or scandalous, but then backs down and allows the mark to be published and ultimately registered. A review of these registrations provides further evidence that the PTO is arbitrary and inconsistent in its administration of the immoral-or-scandalous marks provision. As stated above, of the 1,901 word-mark applications filed from 2003 through 2015 that were refused registration as immoral or scandalous, 140 applications overcame that refusal and 91 proceeded to registration. 66 In many instances, the PTO appears to have arbitrarily accepted dubious reasoning in withdrawing its § 2(a) immoral-or-scandalous refusal-reasoning that the PTO has rejected in similar contexts. For example, in 2013 the PTO refused to register the mark F'D UP for use in connection with apparel (Class 25) and skateboard parts (Class 28) 67 on the ground that it was immoral or scandalous, reasoning in an office action that "'F'D UP' is a common abbreviation for the obscene and vulgar phrase 'fucked up.'" 68 The applicant responded: "We have defined the f'd up to represent fired up (get fired 65 Specifically, in deciding to refuse the registration of an applied-for mark as confusingly similar to an already-registered mark, the PTO looks to "[t]he similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression" and "[t]he similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use. up) [, and] we are now using the words fired up with our advertising of f'd up products." 69 Apparently accepting this representation as sufficient to resolve the matter, the PTO issued no further office actions, published the application on September 3, 2013, and registered it on March 11, 2014. 70 By contrast, in 2010 the PTO refused to register the mark EFFU for use in connection with apparel (Class 25) 71 on the ground that it was immoral or scandalous, reasoning in an office action that "EFF U, . . . the phonetic equivalent of 'Fu' meaning 'fuck you,'" is "scandalous, immoral, and offensive." 72 The applicant responded that EFFU was not necessarily vulgar and an "example of eff-u not being vulgar would be a television show called EFFIN science." 73 The PTO maintained its refusal, stating that "EFFU, which is a direct vulgar insult meaning 'go away' or 'go to hell,' is distinguishable from the term EFFIN." 74 The applicant subsequently abandoned its application. In Brunetti itself, Brunetti similarly asserted to the PTO that FUCT is not necessarily vulgar. He argued in response to the PTO's immoral-or-scandalous refusal that "[a]lthough FUCT is a made-up word, to the extent it has any meaning at all, it is FRIENDS U CAN'T TRUST." 75 Indeed, Brunetti cited in support of this 69 definition the same source, urbandictionary.com, that the PTO itself cites. But unlike the applicant for the mark F'D UP, Brunetti drew an examiner who was unwilling to accept reasoning of this nature. 76 Another example: in 2007, the PTO refused to register the mark MILF NEXT DOOR for use in connection with adult-oriented internet audiovisual entertainment (Class 41), 77 explaining that "the acronym MILF means MOTHER I'D LIKE TO F**K." 78 In response, the applicant explained, inter alia, that "MILF is a title of distinction-a badge of honor-a triumph of the mature woman over a society that fetishizes youth and deems age to be akin to rot. Against this onslaught, this fortysomething woman proudly bears the title, and no less importantly craves to retain it." 79 The PTO initially maintained its decision and issued a final immoral-orscandalous refusal. 80 But six months later, it inexplicably withdrew that refusal 81 and published the mark for opposition on August 5, 2008. The mark was registered on October 21, 2008. 82 http://tsdr.uspto.gov/documentviewer?caseId=sn85310960&docId=ROA20111221192649#docIn dex=6&page=1. 76 See Carpenter & Garner, supra note 8, at 348-54 (discussing the kinds of arguments that applicants made in an effort to overcome an immoral-or-scandalous refusal). 77 By contrast, in 2005 the PTO refused under § 2(a) to register the mark MILF.XXX in connection with adult-oriented internet audiovisual entertainment (Class 41), 83 explaining that "the term 'MILF' included in the applied-for mark means 'Mother [or Mom] I'd Like [to] Fuck' and is thus scandalous because it refers to a lewd or scandalous act." 84 The applicant responded that "'MILF' is susceptible to multiple meanings which may be completely innocuous," among them "'Moro Islamic Liberation Front' (Muslim group in the Philippines)," "'Man I Like Fragging' (Counter Strike gaming clan)," and "'Mother I'd Like to Find' (polite form; from the movie American Pie). 85 In a subsequent office action, the PTO maintained and made final its refusal, stating that "a substantial composite of the general public would associate the term 'MILF' with the offensive phrase 'mom [or mother] I'd like to fuck,' rather than one of the possible alternative meanings offered by the applicant." 86 The PTO asserted that this was particularly true in light of the type of adult entertainment services offered by MILF.XXX, which was precisely the same type of services offered in connection with the mark MILF NEXT DOOR, which was registered two years later. After the PTO's final refusal, the applicant for MILF.XXX abandoned its application. These dubious allowances and conflicting refusals are not isolated instances. Appendix 3 sets forth, by filing year, all 140 word-mark applications filed from 2003 through 2015 that were refused registration on the basis that the applied-for mark was immoral or scandalous but that overcame that refusal-a subset of which then proceeded to registration. Appendix 3 reports numerous examples of published and registered word marks that should not have merited publication or registration if the PTO were applying its immoral-or-scandalous review in a non-arbitrary and consistent manner. For applications filed from 2003 through 2015, the PTO declined to issue an immoral-or-scandalous refusal to and approved for publication a significant number of applications that sought to register a word mark that, based on the PTO's own § 2(a) refusal practices, was immoral or scandalous regardless of context. For example, in 2011 the PTO issued an immoral-or-scandalous refusal to an application for the mark HUNG LIKE A MULE .COM YOU HAVE A VOID AND WE CAN FILL IT 7+ in connection with dating services (Class 45), owing to the subpart HUNG LIKE A MULE. 87 The applicant subsequently abandoned its application. Yet in 2015, the PTO registered the mark HUNG LIKE A M.U.L.E. for apparel (Class 25) without any immoral-or-scandalous objection. 88 Taking another example, in 2007 the PTO issued an immoral-or-scandalous refusal to an application for the mark STFU for apparel (Class 25), 89 stating that "STFU is an acronym for the expletive 'shut the fuck up.'" 90 The applicant then abandoned its application. By contrast, in 2016, the PTO registered the mark STFU for noise suppressors for firearms (Class 13) without any immoral-or-scandalous objection. 91 87 See U.S. Trademark Application Serial No. 85/418,659 (filed Sept. 9, 2011) 91 See STFU, Registration No. 4,932,276 . Indeed, the PTO's treatment of the acronym STFU has been highly variable. U. S. Trademark Application Serial No. 85418,950 (filed Jan. 17, 2012), sought the mark STFU!!! in connection with apparel (Class 25) received no immoral-or-Other examples emerge from applications for marks containing non-English words. In 2008, the PTO issued an immoral-or-scandalous refusal to an application for the mark CAJONES for dietary supplements (Class 5). 92 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. In addition, while the proper spelling of the term is "COJONES" the attached evidence demonstrates that "CAJONES" is a common and often intentional misspelling of the word "COJONES" and has the same overall commercial impression. 93 The applicant subsequently abandoned the application. Yet in 2008, the PTO registered the mark CAJONES for party games (Class 28) without any immoral-or-scandalous objection, 94 even though 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." 95 Similarly, in 2005 the PTO issued no immoral-or-scandalous refusal to the mark CAJONES for beer (Class 32) 96 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 scandalous refusal and was published on January 17, 2012. Similarly, U.S. Trademark Application Serial No. 85/226,902 (filed Jan. 26, 2011), sought the mark STFU in connection with apparel (Class 25) received no immoral-or-scandalous refusal and was published on May 31, 2011. Finally, U.S. Trademark Application Serial No. 77/794,617 (filed Jan. 31, 2009), sought the mark STFU in connection with apparel (Class 25) received no immoral-or-scandalous refusal and was published on January 12, 2010. (None of these three applications proceeded to registration because each of the applicants failed to file evidence that it was using its respective mark in commerce.) 92 drawers.'" 97 (The application subsequently failed to proceed to registration because the applicant failed to submit evidence of actual use of the mark). As a final example, the PTO has been inconsistent in its treatment of "obscenicons" (defined as "strings of symbols, like %$*$##@, used in comic books to represent obscenities" 98 ). It approves some for publication, while refusing to register other very similar obscenicons on the basis that they are immoral or scandalous. For example, in 2009 the PTO issued no immoral-or-scandalous refusal to the mark $#!+ for use in connection with novelty gift items (Class 20) and apparel (Class 25). 99 By contrast, the PTO issued immoral-or-scandalous refusals to the marks NO $#!+ 100 and APE $#!+, 101 both filed only a few years after the application for the mark $#!+. Trademark Application Serial No. 77/668,860 (filed Feb. 12, 2009). The mark was published on January 5, 2010 (but failed to register because the applicant filed no evidence of use in commerce). 100 See U.S. Trademark Application Serial No. 85/855,449 (filed Feb. 20, 2013), sought the mark NO $#!+ for website (Class 41). In an office action dated May 15, 2013, the PTO explained: "The attached evidence from The Merriam-Webster On-line Dictionary, Dictionary.com, and the Urban Dictionary show[s] that this wording is an expression of incredulity and is considered to be vulgar. The substitution of the symbols $ # ! + for the letters S H I T is a chat room designation used to circumvent language filters." U.S. PAT. & TRADEMARK OFFICE, U.S. DEP'T OF COMMERCE, U.S. Trademark Application Serial No. 85/855,449 OFFICE ACTION (May 15, 2013), http://tsdr.uspto.gov/documentviewer?caseId=sn85855449&docId=OOA20130515082926#docI ndex=8&page=1. 101 See U.S. Trademark Application Serial No. 85/611,740 (filed Apr. 30, 2012), sought the mark APE $#!+ for apparel (Class 25). In an office action dated May 22, 2013, the PTO explained: "The attached evidence from the web-based Urban Dictionary shows that the lettering $#!+ is a common substitution for the word 'shit.'" U.S. PAT. & TRADEMARK OFFICE, U.S. DEP'T OF COMMERCE, U.S. Trademark Application Serial No. 85/611,740, OFFICE ACTION, at 3 (May 22, 2013), http://tsdr.uspto.gov/documentviewer?caseId=sn85611740&docId=OOA20130522162859#docI ndex=6&page=1. Again, these are not isolated examples. Appendix 4 sets forth all word-mark applications for words longer than one letter filed from 2003 through 2015 that received no immoral-or-scandalous refusal and proceeded to publication (and often to registration), even though the applications were for word marks that identically matched terms which had elsewhere triggered an immoral-or-scandalous refusal. Perhaps context could explain some of the rejections-i.e., the PTO might have thought some of the word marks listed in Appendix 4 were immoral or scandalous with respect to some goods or services, but not others. 102 But context cannot explain them all. And in any event, the need for the PTO to engage in such difficult contextual judgments helps show the essential arbitrariness of the process of determining that certain uses of a word mark are immoral or scandalous while certain other uses of the same mark are not. 103 From 2003 through 2015, the PTO issued immoral-or-scandalous refusals to at least 50 applied-for marks for being drug-related (including TIGHT BLUNTS for 102 For example, the PTO has refused registration of numerous applications for marks consisting in whole or part of the term BALLS. See, e.g., U.S. Trademark Application Serial No. 77/587,730 (filed Oct. 7, 2008), sought the mark GOT BALLS… in connection with apparel (Class 25); U.S. Trademark Application Serial No. 85/051,113 (filed May 31, 2010), sought the mark FEEL YOUR BALLS in connection with apparel (Class 25). However, the PTO issued no immoral-or-scandalous refusal to U.S. Trademark Application Serial No. 85/071,112 (filed June 24, 2010), which sought the mark BALLS for use in connection with services relating to the organizing of rocketry conventions (Class 41). In response to a PTO request for clarification of the meaning of the mark, the applicant stated: "The term 'Balls' does not have a particular meaning or significance in the relevant industry, nor is it a term of art within the industry. 2011), http://tsdr.uspto.gov/documentviewer?caseId=sn85071112&docId=ROA20110405173926#docIn dex=8&page=1. Apparently satisfied with this explanation, the PTO published the mark on June 7, 2011, and it was subsequently registered on August 23, 2011. Yet the "suggestive sense" of BALLS presumably is the same sense in which the earlier applicants wanted to use it on apparelyet the PTO refused those applications. 103 See also Carpenter & Garner, supra note 8, at 356-62 (reporting inconsistencies in the PTO's issuance of immoral-or-scandalous refusals to different applications for similar or identical marks on similar goods or services). apparel, 104 WHITE POWDER for apparel, 105 COCAINE for soft drinks and energy drinks, 106 and YOU CAN'T SPELL HEALTHCARE WITHOUT THC for painrelief medication 107 ). In its immoral-or-scandalous refusals, the PTO frequently cites the glorification of drug usage as the basis for the immorality or scandalousness of these marks. 108 By contrast, during the same time period, the PTO has both not issued an immoral-or-scandalous refusal and has published marks that contain an anti-drug message (such as DOGS AGAINST DRUGS / DOGS AGAINST CRIME for charity services, 109 D.A.R.E. TO RESIST DRUGS AND VIOLENCE for apparel and other goods, 110 and SAY NO TO DRUGS -REALITY IS THE BEST TRIP IN LIFE for printed matter 111 ). The Supreme Court made clear in Matal v. Tam that the law's regulation of trademarks, specifically legal prohibitions on registration of certain categories of marks, implicates First Amendment interests. 112 Viewed through the lens of the First Amendment, many of the marks subject to an immoral-or-scandalous refusal are instances of high-value speech. Whichever level of scrutiny is applied to analyze the 104 constitutionality of the immoral-or-scandalous-marks provision, the PTO's inconsistent and arbitrary enforcement of the provision is problematic. The PTO's enforcement suggests a lack of fit between the purposes of the provision and the provision as enforced. The PTO's inconsistent and arbitrary enforcement also indicates unconstitutional vagueness. Although it might be tempting to dismiss many of the marks refused as immoral or scandalous as low-value speech at best, a good number of the mark applications in our study that received a § 2(a) immoral-or-scandalous refusal contain political speech or "speech concerning public affairs." 113 Such speech "occupies the highest rung of the hierarchy of First Amendment values, and is entitled to special protection." 114 For example, of the 1,091 word-mark applications in our sample that received an immoral-or-scandalous refusal, 22 of them are a variation of one kind or another on FUCK CANCER (listed in Appendix 5). Others contain political commentary, such as mark applications for OBAMA BIN LADEN for apparel, 116 2013), https://www.forbes.com/sites/deniserestauri/2013/12/17/when-cancer-gets-personal-a-daughter-gets-mad-and-starts-a-human-movement ("That was the beginning of the charity Fuck Cancer-a story about a young women who really just wanted to help her mom and ended up starting a movement that targets Millennials to engage them in an open dialogue about early detection with a clear call to action to involve, engage and educate their parents-and put an end to late stage cancer."). Of these marks, only two were published, both for F CANCER, and only one of these registered. U.S. Compare these marks with a jacket worn by an individual in public bearing the visible words "Fuck the Draft." With regard to that behavior, the Supreme Court held in Cohen v. California 121 that criminalization of this individual's conduct was inconsistent with the First Amendment for forbidding core speech. 122 The Court reasoned that despite the distastefulness of the language used: Surely the State has no right to cleanse public debate to the point where it is grammatically palatable to the most squeamish among us. Yet no readily ascertainable general principle exists for stopping short of that result were we to affirm the judgment below. For, while the particular four-letter word being litigated here is perhaps more distasteful than most others of its genre, it is nevertheless often true that one man's vulgarity is another's lyric. Indeed, we think 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. 123 The Court also emphasized that: [M]uch linguistic expression serves a dual communicative function: it conveys not only ideas capable of relatively precise, detached explication, but otherwise inexpressible emotions as well. In fact, words are often chosen as much for their emotive as their cognitive force. We cannot sanction the view that the Constitution, while solicitous of the cognitive content of individual speech has little or no regard for that emotive function which practically speaking, may often be the more important element of the overall message sought to be communicated. Indeed, as Mr. Justice Frankfurter has said, "[o]ne of the prerogatives of American citizenship is the right to criticize public men and measures-and that means not only informed and responsible criticism but the freedom to speak foolishly and without moderation." 673-74 (1944)). It is principally only in the narrow context of broadcast television, which appears "in the privacy of the home" and "is uniquely accessible to children, even those too young to read," that the Supreme Furthermore, many of the mark applications in our study involve sex or sexuality, a category of speech that the Supreme Court has treated as valuable and protected. For example, the Supreme Court has subjected restrictions of sexuallyoriented programming on cable television to strict scrutiny. 125 Moreover, in this context, the Supreme Court has expressed doubt whether it is even possible to locate "a principled standard" to separate a parody advertisement with sexual contentabout a minister's first time having sexual relations with his mother in an outhousefrom "more traditional political cartoons." 126 First, the PTO's inconsistency and arbitrariness in enforcing the provision shows that there is insufficient fit between the governmental purpose of the provision and the provision's enforcement. In defending the constitutionality of the provision, the government has asserted three interests that the provision serves: "protecting the sensibilities of the public," 127 "the orderly flow of commerce," 128 and "avoiding any appearance that the government approves of such marks." 129 This fit is relevant for both more relaxed and stricter forms of scrutiny. To the extent that this provision must withstand strict scrutiny, the inconsistency and arbitrariness of the PTO's enforcement of the immoral-orscandalous-marks provision bears on the provision's constitutionality. Specifically, the inconsistency and arbitrariness of the PTO's enforcement of the provision shows that the provision is substantially underinclusive (by failing to refuse registration to all immoral or scandalous marks) and overinclusive (by refusing registration to marks that are not immoral or scandalous). As the Supreme Court has made clear, when a law "imposes content-based restrictions on speech, those provisions can stand only if they survive strict scrutiny, 'which requires the Government to prove that the restriction furthers a compelling interest and is narrowly tailored to achieve that interest.'" 130 This standard requires that "when [laws] affect First Amendment Court has limited the First Amendment protection afforded to explicit speech. FCC v. Pacifica Found., 438 U.S. 726, 748-51 (1978). 125 2011)); accord Church of the Lukumi rights they must be pursued by means that are neither seriously underinclusive nor seriously overinclusive." 131 When a law's enforcement is "riddled with exceptions"-as our data show to be true of the PTO's enforcement of the immoralor-scandalous-marks provision-the "law's underinclusivity raises a red flag." 132 Such exceptions "diminish the credibility of the government's rationale for restricting speech in the first place." 133 Analysis of the immoral-or-scandalous provision pursuant to strict scrutiny therefore suggests a lack of fit between the government's asserted purposes for the provision and its enforcement of the provision. The analysis is similar even if the immoral-or-scandalous-marks provision is subject to a more relaxed form of constitutional scrutiny pursuant to Central Hudson-the standard the Federal Circuit applied in Brunetti 134 -as a regulation of commercial speech. Recall that the fourth prong of the Central Hudson inquiry requires a determination whether the law at issue "is not more extensive than necessary to serve [a substantial government] interest." 135 The Federal Circuit found the immoral-or-scandalous-marks provision constitutionally wanting under this prong, as discussed above. 136 Our data support a failure of the fourth Central Hudson prong. Specifically, the Supreme Court has made clear that when, as here, "[t]he operation of [a law] is so pierced by exemptions and inconsistencies . . . the Government cannot hope to exonerate it" under the fourth prong of Central Hudson. 137 Babalu Aye, Inc. v. City of Hialeah, 508 U.S. 520, 546-47 (1993) ("Where government restricts only conduct protected by the First Amendment and fails to enact feasible measures to restrict other conduct producing substantial harm or alleged harm of the same sort, the interest given in justification of the restriction is not compelling."). 131 The PTO's inconsistency and arbitrariness in enforcement of the § 2(a) prohibition on the registration of immoral or scandalous marks shows that the provision is also unconstitutionally vague in the context of the First Amendment. The Supreme Court has consistently emphasized that a law that contains "no standard for determining" how to satisfy a requirement of the law is constitutionally problematic. 138 That is because in such an instance, the law "vests virtually complete discretion in the hands of the [government] to determine whether the" legal requirement is met. 139 The Court has concluded that such a law "is unconstitutionally vague on its face because it encourages arbitrary enforcement by failing to describe with sufficient particularity what [one] must do in order to satisfy the statute." 140 To the Court, the constitutional "concern [with vagueness] . . . is based upon the 'potential for arbitrarily suppressing First Amendment liberties.'" 141 Specifically, "the vagueness of . . . a [content-based] regulation [of speech] raises special First Amendment concerns because of its obvious chilling effect on free speech." 142 For this reason, although unconstitutional vagueness arises in multiple contexts, the Court has made clear that "[i]f . . . [a] law interferes with the right of free speech . . ., a more stringent vagueness test should apply." 143 With respect to § 2(a), the inconsistent and arbitrary enforcement by the PTO of the immoral-or-scandalous-marks provision suggests that the provision is unconstitutionally vague, in that the vagueness engenders trademark examiners' widely inconsistent and arbitrary applications of the provision. In fact, in the related context of § 2(a)'s disparagement provision, the Tam Court acknowledged the "admitted vagueness of the disparagement test." 144 138 Kolender v. Lawson, 461 U.S. 352, 358 (1983). 139 Id. 140 Id. at 361. 141 Id. (quoting Shuttlesworth v. City of Birmingham, 382 U.S. 87, 91 (1965)). 142 Reno v. Am. Civil Liberties Union, 521 U.S. 844, 871-72 (1997). 143 Village of Hoffman Estates v. Flipside, Hoffman Estates, Inc., 455 U.S. 489, 499 (1982); cf. Winters v. New York, 333 U.S. 507, 509-10 (1948) (finding unconstitutionally vague a criminal law prohibiting the sale of obscene magazines, and reasoning that "[a] failure of a statute limiting freedom of expression to give fair notice of what acts will be punished and such a statute's inclusion of prohibitions against expressions, protected by the principles of the First Amendment violates a[ subject's] rights under … freedom of speech"). Our study shows that the PTO's enforcement of the immoral-or-scandalousmarks provision is systematically inconsistent and arbitrary. This inconsistency and arbitrariness suggest that the provision violates the First Amendment's Free Speech clause because of a lack of fit between the provision's purposes and its enforcement. Furthermore, the provision abets viewpoint discrimination and is unconstitutionally vague. Beyond the bounds of this Article, but of significant theoretical interest, is the question of how courts should assess claims of lack of fit when those claim are based on "big data," particularly when a party challenging a statutory provision is able to show exactly how many false positives and false negatives the provision has produced in practice. While previously parties may have relied on handpicked collections of representative anecdotes and courts on vague admonitions against statutes that are "seriously" underinclusive or overinclusive, 145 it is now not difficult to imagine the emergence of "big data Brandeis briefs" 146 that will compel courts to specify precisely how much fit is necessary for a provision to pass constitutional muster. 147 145 Brown v. Entertainment Merchants Ass'n, 564 U.S. 786, 805 (2011). 146 The ordinary "Brandeis brief" was "the first brief that had more pages by far of statistics than of legal principles . . . . It exemplified the method of explaining to a court the facts that make a law reasonable[.]" Phillipa Strum, Brandeis and the Living Constitution, in BRANDEIS AND AMERICA 120 (Nelson L. Dawson ed., 1989). 147 The Supreme Court has done something similar in the context of election law, after it had ruled that redistricting plans must satisfy the constitutional principle under the Equal Protection Clause of "one person, one vote." See Gray v. Sanders, 372 U. S. 368 (1963); Baker v. Carr, 369 U. S. 186 (1962). In subsequent decisions, the Supreme Court noted that state legislative redistricting plans with "a maximum population deviation under 10%" among districts are presumptively constitutional. Brown v. Thomson, 462 U.S. 835, 842 (1983). Class 1: Chemicals for use in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; fire extinguishing and fire prevention compositions; tempering and soldering preparations; substances for tanning animal skins and hides; adhesives for use in industry; putties and other paste fillers; compost, manures, fertilizers; biological preparations for use in industry and science. Class 2: Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants, dyes; inks for printing, marking and engraving; raw natural resins; metals in foil and powder form for use in painting, decorating, printing and art. Class 3: Non-medicated cosmetics and toiletry preparations; non-medicated dentifrices; perfumery, essential oils; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations. Class 4: Industrial oils and greases, wax; lubricants; dust absorbing, wetting and binding compositions; fuels and illuminants; candles and wicks for lighting. Class 5: Pharmaceuticals, medical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for human beings and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides. Class 6: Common metals and their alloys, ores; metal materials for building and construction; transportable buildings of metal; non-electric cables and wires of common metal; small items of metal hardware; metal containers for storage or transport; safes. Class 7: Machines, machine tools, power-operated tools; motors and engines, except for land vehicles; machine coupling and transmission components, except for land vehicles; agricultural implements, other than hand-operated hand tools; incubators for eggs; automatic vending machines. Class 8: Hand tools and implements, hand-operated; cutlery; side arms, except firearms; razors. Class 9: Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling (sic), detecting, testing, inspecting, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity; apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data; recorded and downloadable media, computer software, blank digital or analogue recording and storage media; mechanisms for coin-operated apparatus; cash registers, calculating devices; computers and computer peripheral devices; diving suits, divers' masks, ear plugs for divers, nose clips for divers and swimmers, gloves for divers, breathing apparatus for underwater swimming; fire-extinguishing apparatus. Class 10: Surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopaedic articles; suture materials; therapeutic and assistive devices adapted for the disabled; massage apparatus; apparatus, devices and articles for nursing infants; sexual activity apparatus, devices and articles. Class 11: Apparatus and installations for lighting, heating, cooling, steam generating, cooking, drying, ventilating, water supply and sanitary purposes. Class 12: Vehicles; apparatus for locomotion by land, air or water. Class 13: Firearms; ammunition and projectiles; explosives; fireworks. Class 14: Precious metals and their alloys; jewellery (sic), precious and semiprecious stones; horological and chronometric instruments. Class 15 Musical instruments; music stands and stands for musical instruments; conductors' batons. Class 16: Paper and cardboard; printed matter; bookbinding material; photographs; stationery and office requisites, except furniture; adhesives for stationery or household purposes; drawing materials and materials for artists; paintbrushes; instructional and teaching materials; plastic sheets, films and bags for wrapping and packaging; printers' type, printing blocks. Class 17: Unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica and substitutes for all these materials; plastics and resins in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, tubes and hoses, not of metal. Class 18: Leather and imitations of leather; animal skins and hides; luggage and carrying bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; collars, leashes and clothing for animals. Class 19: Materials, not of metal, for building and construction; rigid pipes, not of metal, for building; asphalt, pitch, tar and bitumen; transportable buildings, not of metal; monuments, not of metal. Class 20: Furniture, mirrors, picture frames; containers, not of metal, for storage or transport; unworked or semi-worked bone, horn, whalebone or motherof-pearl; shells; meerschaum; yellow amber. Class 21: Household or kitchen utensils and containers; cookware and tableware, except forks, knives and spoons; combs and sponges; brushes, except paintbrushes; brush-making materials; articles for cleaning purposes; unworked or semi-worked glass, except building glass; glassware, porcelain and earthenware. Class 22: Ropes and string; nets; tents and tarpaulins; awnings of textile or synthetic materials; sails; sacks for the transport and storage of materials in bulk; padding, cushioning and stuffing materials, except of paper, cardboard, rubber or plastics; raw fibrous textile materials and substitutes therefor. Class 24: Textiles and substitutes for textiles; household linen; curtains of textile or plastic. Class 26: Lace, braid and embroidery, and haberdashery ribbons and bows; buttons, hooks and eyes, pins and needles; artificial flowers; hair decorations; false hair. Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings, not of textile. Class 28: Games, toys and playthings; video game apparatus; gymnastic and sporting articles; decorations for Christmas trees. Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk, cheese, butter, yoghurt and other milk products; oils and fats for food. Class 30: Coffee, tea, cocoa and artificial coffee; rice, pasta and noodles; tapioca and sago; flour and preparations made from cereals; bread, pastries and confectionery; chocolate; ice cream, sorbets and other edible ices; sugar, honey, treacle; yeast, baking-powder; salt, seasonings, spices, preserved herbs; vinegar, sauces and other condiments; ice (frozen water). Class 31: Raw and unprocessed agricultural, aquacultural (sic), horticultural and forestry products; raw and unprocessed grains and seeds; fresh fruits and vegetables, fresh herbs; natural plants and flowers; bulbs, seedlings and seeds for planting; live animals; foodstuffs and beverages for animals; malt. Class 32: Beers; non-alcoholic beverages; mineral and aerated waters; fruit beverages and fruit juices; syrups and other non-alcoholic preparations for making beverages. Class 33: Alcoholic beverages, except beers; alcoholic preparations for making beverages. Class 34: Tobacco and tobacco substitutes; cigarettes and cigars; electronic cigarettes and oral vaporizers for smokers; smokers' articles; matches. See 15 U.S.C. § 1052 (2012). N.Y.U. JOURNAL OF INTELL. PROP. & ENT. LAW [Vol. 8:2 Central Hudson Gas & Elec. Corp. v. Public Serv. Comm'n of N.Y., 447 U.S. 557 (1980). Tam, 137 S. Ct. at 1764 (plurality opinion). Id. at 1765 (Kennedy, J., concurring in part and concurring in judgment). Indeed, Justice Kennedy's concurrence suggested that this is essentially what Justice Alito's opinion for the Court held: "As the Court is correct to hold, § 1052(a) constitutes viewpoint discrimination-a form of speech suppression so potent that it must be subject to rigorous constitutional scrutiny." List of Classes with Explanatory Notes, WIPO (last updated Dec. 19, 2018), https://www.wipo.int/classifications/nice/nclpub/en/fr/20190101/classheadings/?explanatory_not es=show&lang=en&menulang=en 50 U.S. Trademark Application Serial No. 85/418,294 (filed on Sept. 8, 2011), sought mark PHUC for apparel (Class 25). See U.S. Trademark Application No. 77/064,757 (filed Dec. 14, 2006).78 See U.S. PAT. & TRADEMARK OFFICE, U.S. DEP'T OF COMMERCE, U.S. Trademark 79 See U.S. PAT. & TRADEMARK OFFICE, U.S. DEP'T OF COMMERCE, U.S. 80 See U.S. PAT. & TRADEMARK OFFICE, U.S. DEP'T OF COMMERCE, U.S. Trademark 82 MILF NEXT DOOR, Registration No. 3,518,834. 88 See HUNG LIKE A M.U.L.E., Registration No. 4,796,702. 89 See U.S. Trademark Application Serial No. 77/090,708 (filed Jan. 25, 2007). 90 U.S. PAT. & TRADEMARK OFFICE, U.S. DEP'T OF COMMERCE, U.S. 93 U.S. PAT. & TRADEMARK OFFICE, U.S. DEP'T OF COMMERCE, U.S.94 See CAJONES, Registration No. 3,444,976. 95 Id. (emphasis added).96 See U.S. Trademark Application Serial No. 78/452,365 (filed July 17, 2004). 98 Patricia T. O'Conner & Stewart Kellerman, What Do You Call a %$*$##@?,99 See U.S. 114 Id.(quoting Connick v. Myers, 461 U.S. 138, 145 (1983)).115 See generally Denise Restauri, When Cancer Gets Personal, a Daughter Gets Mad and

B. Applications That Overcame a Section 2(a) Immoral-or-Scandalous Refusal

C. Applications for Immoral or Scandalous Marks That Never Received a Section 2(a) Refusal

V VIEWPOINT DISCRIMINATION AT THE PTO UNDER SECTION 2(a)

VI FIT AND VAGUENESS UNDER THE FIRST AMENDMENT

Class 4: Industrial oils and greases, wax; lubricants; dust absorbing, wetting and binding compositions; fuels and illuminants; candles and wicks for lighting.

Class 8: Hand tools and implements, hand-operated; cutlery; side arms, except firearms; razors.

Class 11: Apparatus and installations for lighting, heating, cooling, steam generating, cooking, drying, ventilating, water supply and sanitary purposes.

Class 12: Vehicles; apparatus for locomotion by land, air or water. Class 13: Firearms; ammunition and projectiles; explosives; fireworks.

Class 14: Precious metals and their alloys; jewellery (sic), precious and semiprecious stones; horological and chronometric instruments.

Class 15 Musical instruments; music stands and stands for musical instruments; conductors' batons.

Class 24: Textiles and substitutes for textiles; household linen; curtains of textile or plastic.

Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings, not of textile.

Class 28: Games, toys and playthings; video game apparatus; gymnastic and sporting articles; decorations for Christmas trees.

Class 33: Alcoholic beverages, except beers; alcoholic preparations for making beverages.

Class 34: Tobacco and tobacco substitutes; cigarettes and cigars; electronic cigarettes and oral vaporizers for smokers; smokers' articles; matches.

See 15 U.S.C. § 1052 (2012).

N.Y.U. JOURNAL OF INTELL. PROP. & ENT. LAW [Vol. 8:2

Central Hudson Gas & Elec. Corp. v. Public Serv. Comm'n of N.Y., 447 U.S. 557 (1980).

Tam, 137 S. Ct. at 1764 (plurality opinion).

50 U.S. Trademark Application Serial No. 85/418,294 (filed on Sept. 8, 2011), sought mark PHUC for apparel (Class 25).

98 Patricia T. O'Conner & Stewart Kellerman, What Do You Call a %$*$##@?,99 See U.S.

114 Id.(quoting Connick v. Myers, 461 U.S. 138, 145 (1983)).115 See generally Denise Restauri, When Cancer Gets Personal, a Daughter Gets Mad and