Brief of Professors Barton Beebe and Jeanne C. Fromer as Amici Curiae, Iancu v. Brunetti

In 2017, this Court held that the Lanham Act's prohibition on the registration of trademarks that "disparage * * * or bring * * * into contemp [t] or disrepute" any "persons, living or dead," 15 U.S.C. § 1052(a), violates the Free Speech Clause of the First Amendment. Matal v. Tam, 137 S. Ct. 1744, 1751 (2017).

This case presents the question whether the neighboring prohibition on the registration of trademarks that "[c]onsis[t] of or compris[e] immoral * * * or scandalous matter," 15 U.S.C. § 1052(a), also runs afoul of the First Amendment's Free Speech Clause. Whether this provision is unconstitutional turns in part on whether, and to what extent, the PTO has applied this provision arbitrarily or inconsistently.

We have therefore undertaken a large-scale empirical study of trademark applications and registrations at the PTO to assess to what degree the PTO is arbitrary or inconsistent in its implementation of the § 1052(a) prohibition on the registration of immoral or scandalous marks. In particular, we have systematically studied all 3.6 million applications for marks that include text (which we refer to as "word-mark applications") filed at the PTO from 2003 through 2015 to learn which marks the PTO has refused to register for being immoral or scandalous in contravention of § 1052(a).

Our study shows, from multiple vantage points, that the PTO's enforcement of the immoral-orscandalous-marks provision is systematically inconsistent and arbitrary. That conclusion has led us to file this brief supporting respondent. Whether or not the Court agrees with our ultimate conclusion, however, our data may be useful to the Court's decision, and we have submitted the results of our study to assist the Court as fully as possible.

Our study shows that the PTO's enforcement of the immoral-or-scandalous-marks provision is systematically inconsistent and arbitrary. First, many of the PTO's refusals show inconsistency on their face: the PTO routinely states that it cannot register an applied-for mark because the mark is immoral or scandalous-and because in any event, it has already allowed someone else to register the same mark, or a highly similar one, with respect to the same or similar goods or services. Second, the PTO is arbitrary and inconsistent in allowing certain applications to overcome an immoral-or-scandalous refusal under § 1052(a). Third, the PTO often treats identical or highly similar marks on identical or highly similar goods differently, approving some for publication and refusing others as immoral or scandalous. Fourth, in its immoral-or-scandalous refusals, the PTO has discriminated between registrable and unregistrable marks based on those marks' viewpoint.

For our study, we used two datasets. First is the PTO's Trademark Case Files Dataset, which the PTO made publicly available in 2012 and has since updated annually. 3 That dataset currently provides detailed information about all 7.3 million trademark applications filed at the PTO from 1982 through 2017, including data on applicant and mark characteristics, prosecution events, and ownership and renewal history. The dataset also provides more limited information on the 208,084 trademarks already registered at the PTO as of 1982 that were based on applications filed before 1982.

A significant limitation of the Trademark Case Files Dataset, however, is that it does not indicate the grounds for a refusal to register a mark. We therefore developed a second dataset of our own, containing all office actions issued by the PTO from 2003 (when the PTO began posting its office actions online) through 2017. 4 To develop this dataset, we systematically downloaded some 3.1 million office actions from the PTO website and used keywords and key phrases to autocode them for certain characteristics. Most relevant here, we autocoded the 3 See U.S. Patent & Trademark Office, Trademark Case Files Dataset (2018), https://www.uspto.gov/learning-and-resources/electronic-data-products/trademark-case-filesdataset-0; see also Stuart Graham et al., U.S. Patent & Trademark Office, The USPTO TradeMark Case Files Dataset: Descriptions, Lessons, and Insights 3, 35 (2013), https://www.us pto.gov/sites/default/files/ip/officechiefecon/Trademark_Case_Fil e_Data_Documentation_31January2013_final.pdf (describing the dataset and surveying trends in trademark applications and registrations).

office actions for whether the PTO refused registration on the basis that the applied-for mark was immoral or scandalous, 15 U.S.C. § 1052(a), and on the basis that the applied-for mark was confusingly similar to an already-registered mark, 15 U.S.C. § 1052(d). 5 5 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 § 1052 (a) or that the mark is confusingly similar to an already-registered mark under § 1052 (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 been published). Any party that believes it may be harmed by registration of the mark then has thirty days to oppose registration of the mark. If no opposition is filed or if the mark is unsuccessfully opposed, the mark then proceeds to registration, except that if the applicant was not yet using the mark in commerce at the time of application, the applicant must first submit evidence of actual use in commerce before the PTO will register the mark. See U.S. Patent & Trademark Office, Trademark process, https://www.uspto.gov/tr ademarks-getting-started/trademark-process#step1 (providing an overview of the trademark registration process); Barton Beebe, Trademark Law: An Open-Source Casebook 269-73 (5th ed. 2018), http://tmcasebook.org/wp-content/uploads/2018/07/BeebeTMLaw-5.0-Full-Book.pdf.

We used these two datasets, along with others, in recently published work to study whether we are exhausting the supply of competitively effective trademarks. Beebe & Fromer, Are We Running Out of Trademarks?. Here, we use these datasets to analyze comprehensively the PTO's application of the § 1052 prohibition on the registration of immoral or scandalous marks with respect to applications filed from 2003 through 2015. Because of the significant computational challenges presented by the analysis of trademark applications for marks consisting only of images, we restrict our analysis here to word-mark applications. During the period studied, 97% of trademark applications submitted to the PTO were for marks that consisted in whole or part of text.

As background, Appendix 1 shows the number of word-mark applications for registration on the Principal Register received by the PTO from 2003 through 2015. For applications filed from 2003 through 2015, Appendix 2 details by filing year the number of word-mark applications that received an immoral-or-scandalous refusal and the number of such refusals that were overcome. Before relaying our findings, we note (and we caution the reader) that they include a number of words and phrases not appropriate for polite company. We have included these details so that the Court can decide for itself why the PTO registered some marks and refused registration to otherssometimes to the same mark. They are included in full so that the Court can fully evaluate the PTO's consistency-or lack thereof. While § 1052(a) of the Lanham Act prohibits the registration of a mark that "[c]onsists of or comprises immoral * * * or scandalous matter," § 1052(d) prohibits the registration of a mark that "[c]onsists of or 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." 15 U.S.C. § 1052(d). Remarkably, the PTO routinely issues refusals to the same application on the twin bases that the appliedfor mark is immoral or scandalous under § 1052 (a) and that the applied-for mark is confusingly similar to an already-registered mark under § 1052 (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 § 1052(a) prohibition on the registration of immoral-or-scandalous marks-and often just a short time apart.

Consider some examples of applications for marks that are similar to respondent's proposed mark FUCT. In 2009, the PTO refused to register the mark FUK!T in connection with apparel (Class 25) 6 and the operation of an internet website (Class 42) on the bases that the applied-for mark was immoral or scandalous under § 1052(a) and confusingly similar under § 1052(d) to the recently-registered mark PHUKIT for apparel (Class 25). 7 Similarly, on June 6 Class numbers denote what goods or services the mark is to be used with. A trademark applicant must specify the goods and services in connection with which the applicant claims the exclusive right to use the mark. See 15 U.S.C. § 1051(a)(2). The applicant includes a written description of the goods and services and also designates one or more of the forty-five categories of goods and services contained in the International Classification of Goods and Services for the Purposes of the Registration of Marks, which are listed in Appendix 3. U.S. Patent & Trademark Office, Trademark Manual of Examining Procedure § 1401.03 (Oct. 2017); 37 C.F.R. § 2.32(a) (7); see also List of Classes with Explanatory Notes, World Intell. Prop. Org., http://web2.wipo.int/classifications/nice/nclpub/en/fr/20170101/cl assheadings/?explanatory_notes.

Appendix 4 sets forth the international classes of goods or services claimed by all word-mark applications filed from 2003 through 2015 that received a § 1052(a) immoral-or-scandalous refusal. As Appendix 4 indicates, a very large proportion of applications receiving a § 1052(a) immoral-or-scandalous refusal claim the applied-for mark for use in connection with apparel goods (Class 25). Entertainment services (Class 41) and printed matter (Class 16) also show significant levels of applications receiving a § 1052(a) immoral-or-scandalous refusal.

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 earlierfiled mark PHUC for apparel receive any immoral-orscandalous refusal. 8 The PTO has done this repeatedly-i.e., given different treatment to the same (or nearly same) Fword 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.foot_4 Similarly, the PTO registered FVCK STREET WEAR for apparel, but then two years later refused to register FVCKD because it was scandalous and also confusingly similar to an already-registered mark. 10 There is a wide range of marks for which these twin refusals occur, well beyond those that are variations on respondent 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 already-registered mark: recently-registered mark RED COCK BEER for beer; 16

• CAMEL TOES for apparel, immoral or scandalous and confusingly similar to the already-registered mark CAMEL TOES for apparel. 17

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 § 1052(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- 16 Trademark Application Serial No. 85,253,332, filed February 28, 2011, sought to register the mark FAT COCK BEER in connection with beer (Class 32). In an office action dated July 5, 2011, 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. Appendix 5 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 § 1052(a) and confusingly similar under § 1052(d) to a mark that the PTO had already registered or at least already approved for publication in the Official Gazette. 20 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 words-from commonly used profanities like FUCK and its variations to a slew of less widespread words-suggesting that the inconsistent treatment is broad and irremediable.

3,202,335, namely CABRON 49 for apparel (Class 25), as registered on January 23, 2007. 20 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 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 for mixed drinks (Class 33), Trademark Registration No. 3,262,700, registered July 10, 2007. In such an instance, a twin refusal does not suggest inconsistency on the part of the PTO in application of the immoral-or-scandalousmarks provision.

These inconsistencies cannot be explained away as merely the result of the marks at issue being used in different contexts-such as differing "meaning in relation to the particular goods and services for which registration is sought" and "change[s in attitudes] over time," as petitioner suggests. Gov't Br. 45-46. This is precisely because in these 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. 21 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 earlierfiled marks that the PTO cited as the basis for its confusing similarity refusals under § 1052(d), which indicates that changing attitudes cannot explain these inconsistencies. 21 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." In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973).

Arbitrary in Allowing Certain Applications to Overcome a § 1052(a) Immoral-or-Scandalous Refusal.

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-orscandalous marks provision.

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. 22 In many instances, the PTO appears arbitrarily to have accepted dubious reasoning in withdrawing its § 1052(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) 23 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 22 See Appendix 2. 23 See Trademark Application Serial No. 85/762,896 (filed Oct. 24, 2012). 'fucked up.'" 24 The applicant responded: "We have defined the f'd up to represent fired up (get fired up) [, and] we are now using the words fired up with our advertising of f'd up products." 25 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.

By contrast, in 2010 the PTO refused to register the mark EFF U for use in connection with apparel (Class 25) 26 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." 27 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." 28 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." 29 The applicant subsequently abandoned its application.

In the instant case, respondent has similarly asserted to the PTO that FUCT is not necessarily vulgar. He argued in response to the PTO's immoralor-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."foot_12 Indeed, Mr. Brunetti cited in support of this definition the same source, the "Urban Dictionary," 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.

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), 31 explaining that "the acronym MILF means MOTHER I'D LIKE TO F**K." 32 In response, the applicant explained, among much else, 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." 33 The PTO maintained and made final its immoral-or-scandalous refusal. 34 But then six months later, it inexplicably withdrew its refusal 35 37 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)." 38 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." 39 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 6 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 6 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.

Highly Similar Marks on Identical or Highly Similar Goods Differently, Approving Some for Publication and Refusing Others as Immoral or Scandalous.

For applications filed from 2003 through 2015, the PTO failed 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 § 1052(a) refusal practices, was immoral or scandalous regardless of context.

For example, in 2011 the PTO issued an immoralor-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. 40 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-orscandalous objection. 41 Taking another example, in 2007 the PTO issued an immoral-or-scandalous refusal to an application for the mark STFU for apparel (Class 25),foot_24 stating that "STFU is an acronym for the expletive 'shut the fuck up.'" 43 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. 44 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). 45 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. 46 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, 47 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) 48 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.'" (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" 49 ), approving 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 $#!+ for use in connection with novelty gift items (Class 20) and apparel (Class 25). 50 By contrast, the PTO issued immoral-or-scandalous refusals to the 48 See Trademark Application Serial No. 78/452,365 (filed July 17, 2004). 49 Patricia T. O'Conner & Stewart Kellerman, What Do You Call a %$*$##@?, Grammarphobia Blog (Mar. 1, 2011), https://www.grammarphobia.com/blog/2011/03/grawlix.html. 50 See 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).

marks NO $#!+ 51 and APE $#!+, 52 both filed only a few years after the application for the mark $#!+.

Again, these are not isolated examples. Appendix 7 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 7 were immoral or scandalous with respect to some goods or services, but not 51 See Trademark Application Serial No. 85/855,449 (filed Feb. 20, 2013), for 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." Office Action, May 15, 2013, http://tsdr.uspto.gov/documentview er?caseId=sn85855449&docId=OOA20130515082926#docIndex= 8&page=1. 52 See Trademark Application Serial No. 85/611,740 (filed Apr. 30, 2012), for 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.'" Office Action, May 22, 2013, http://tsdr.uspto.gov/documentviewer?caseId=sn8 5611740&docId=OOA20130522162859#docIndex=6&page=1. others. 53 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. 53 For example, the PTO has refused registration of numerous applications for marks consisting in whole or part of the term BALLS. See, e.g., Trademark Application Serial No. 77/587,730 (filed Oct. 7, 2008), for GOT BALLS… in connection with apparel (Class 25); Trademark Application Serial No. 85/051,113 (filed May 31, 2010), for FEEL YOUR BALLS in connection with apparel (Class 25). However, the PTO issued no immoral-or-scandalous refusal to Trademark Application Serial No. 85/071,112 (filed on June 24, 2010), which sought to register 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. The term is being used solely in a suggestive sense." Response to Office Action, Apr. 4, 2011, http://tsdr.uspto.gov/documentviewer?caseId=sn85071112&docI d=ROA20110405173926#docIndex=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 apparel-yet the PTO refused those applications.

Refusals, the PTO Has Discriminated Between Registrable and Unregistrable Marks Based on Those Marks' Viewpoint.

From 2003 through 2015, the PTO issued immoralor-scandalous refusals to at least 50 applied-for marks for being drug-related (including TIGHT BLUNTS for apparel, 54 WHITE POWDER for apparel, 55 COCAINE for soft drinks and energy drinks, 56 and YOU CAN'T SPELL HEALTHCARE WITHOUT THC for pain-relief medication 57 ). 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. 58 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, 59 D.A.R.E. TO RESIST DRUGS AND VIOLENCE for apparel and other goods, 60 and SAY NO TO DRUGS -REALITY IS THE BEST TRIP IN LIFE for printed matter 61 ).

This 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. See Tam, 137 S. Ct. at 1751 ("We now hold that [ § 1052(a)'s disparagement] provision violates the Free Speech Clause of the First Amendment. It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.").

Viewed through the lens of the First Amendment, many of the marks subject to an immoral-orscandalous refusal are instances of high-value speech. Whichever level of scrutiny the Court chooses to apply to analyze the constitutionality of this provision, the PTO's inconsistent and arbitrary 59 See U.S. Registration No. 2,822,861, filed Sept. 25, 2006. 60 See U.S. Registration No. 2,975,163, filed May 5, 2003. 61 See U.S. Registration No. 2,966,019, filed Mar. 12, 2004. enforcement of the provision is problematic. It 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.

Immoral-or-Scandalous Refusal Are Instances of High-Value Speech.

Although it might be tempting to dismiss many of the marks refused as immoral or scandalous as lowvalue speech at best, a good number of the mark applications in our study that received a § 1052(a) immoral-or-scandalous refusal contain political speech or "'speech concerning public affairs,'" Snyder v. Phelps, 562 U.S. 443, 452 (2011) (quoting Garrison v. Louisiana, 379 U.S. 64, 74-75 (1964)), which "'occupies the highest rung of the hierarchy of First Amendment values, and is entitled to special protection. '" Id. (quoting Connick v. Myers, 461 U.S. 138, 145 (1983)). For example, of the 1,091 wordmark 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 8). 62 See generally Denise Restauri, When Cancer Gets Personal, a Daughter Gets Mad and Starts a Human Movement, Forbes, 62 Of these marks, only two were published, both for F CANCER, and only one of these registered. Trademark Application Serial No. 77,954,532, filed Mar. 9, 2010 (published only); Trademark Application Serial No. 77,983,618, filed Mar. 9, 2010 (registered).

Dec. 17, 2013, https://www.forbes.com/sites/ deniserestauri/2013/12/17/when-cancer-getspersonal-a-daughter-gets-mad-and-starts-a-humanmovement ("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."). Others contain political commentary, such as mark applications for OBAMA BIN LADEN for apparel, 63 KATRINA BLOWS BUSH SUCKS for bumper stickers,foot_31 CRAPITOL HILL for magnets, printed matter, and apparel, among other things,foot_32 REPUBLICANS ARE LIKE DIAPERS… TIGHT ON THE POOR MAN'S ASS AND ALWAYS FULL OF SHIT for bumper stickers,foot_33 and FUCK PARIS FUCK LONDON I LOVE NEW YORK for apparel. 67 Compare these marks with a jacket worn by an individual in public bearing the visible words "Fuck the Draft. " Cohen v. California, 403 U.S. 15 (1971). In that case, this Court held that criminalization of this individual's conduct was inconsistent with the First Amendment for forbidding core speech. Id. at 26. 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.

Id. at 25. The Court also emphasized that: much 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." . at 26 (quoting Baumgartner v. United States, 322 U.S. 665, 673-74 (1944)). 68 Many of the mark applications in our study are also sexual, a category of speech which this Court has treated as valuable and protected. See, e.g., United States v. Playboy Entm't Grp., Inc., 529 U.S. 803, 813-14 (2000) (subjecting restrictions of sexually-oriented programming on cable television to strict scrutiny); Hustler Magazine, Inc. v. Falwell, 485 U.S. 46, 55 (1988) (doubting that there is "a principled standard" to separate a parody advertisement about a minister's first time having sexual relations with his mother in an outhouse from "more traditional political cartoons"). 68 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 this Court has limited the First Amendment protection afforded to explicit speech. FCC v. Pacifica Found., 438 U.S. 726, 748-51 (1978). The PTO's inconsistency and arbitrariness in enforcing the immoral-or-scandalous-marks provision suggests that there is insufficient fit between the governmental purpose of the provision and the provision's inconsistent and arbitrary enforcement. The government has asserted three interests in the immoral-or-scandalous-marks provision: "protecting the sensibilities of the public," Gov't Br. 32, "the orderly flow of commerce," id. at 34, and "avoiding any appearance that the government approves of such marks," id. This fit is relevant for both stricter and more relaxed 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-or-scandalousmarks provision bears on the provision's constitutionality. Specifically, the inconsistency and arbitrariness of the PTO's enforcement of the provision suggests that the provision is seriously 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 (and are not otherwise prohibited to be registered by trademark law)), thereby calling into question the provision's constitutionality. See Reed v. Town of Gilbert, Ariz., 135 S. Ct. 2218, 2231 (2015 Bar, 135 S. Ct. 1656, 1668-669 (2015) (observing that "a law's underinclusivity raises a red flag," especially when it is "riddled with exceptions"); City of Ladue v. Gilleo, 512 U.S. 43, 52-53 (1994) ("Exemptions from an otherwise legitimate regulation of a medium of speech * * * may diminish the credibility of the government's rationale for restricting speech in the first place.").

The analysis is similar even if the immoral-orscandalous-marks provision is subject to a more relaxed form of constitutional scrutiny pursuant to Central Hudson Gas & Electric Corp. v. Public Service Commission of New York, 447 U.S. 557 (1980), as a regulation of commercial speech. 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." Id. at 566. As the Federal Circuit held below in the instant case:

[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." See Reno v. Am. Civil Liberties Union, 521 U.S. 844, 871 (1997). 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.

Pet. App. 39a; cf. Tam, 137 S. Ct. at 1756-57 (acknowledging that that "the huge volume of [trademark] applications have produced a haphazard record of enforcement" of the disparagement provision, and that "today, the principal register is replete with marks that many would regard as disparaging to racial and ethnic groups"); id. at 1764-65 (plurality opinion) ("[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 anti-discrimination clause; it is a happy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted.") (emphasis in original).

The 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. Greater New Orleans Broad. Ass'n v. United States, 527 U.S. 173, 190 (1999) Indeed, to the extent the Court thinks the PTO's inconsistency in enforcement of the provision means the provision suffers from a lack of fit between its purposes and its enforcement whatever the level of scrutiny, the Court need not resolve whether trademarks are commercial speech. Cf. Tam, 137 S. Ct. at 1764 (plurality opinion) ("We need not resolve this debate between the parties [over whether trademarks are commercial speech] because the disparagement clause cannot withstand even Central Hudson review."); id. at 1767 (Kennedy, J., concurring in part and concurring in the judgment, joined by Ginsburg, Sotomayor, and Kagan, JJ.) ("The parties dispute whether trademarks are commercial speech and whether trademark registration should be considered a federal subsidy. The former issue may turn on whether certain commercial concerns for the protection of trademarks might, as a general matter, be the basis for regulation. However that issue is resolved, the viewpoint based discrimination at issue here necessarily invokes heightened scrutiny.").

of the PTO's Enforcement of the Immoral-or-Scandalous-Marks Provision Also Suggest That the Provision Is Unconstitutionally Vague.

In addition to bearing on the fit between the government's purpose in the immoral-andscandalous-marks provision and its enforcement, the PTO's inconsistency and arbitrariness in enforcement suggests that § 1052(a) is unconstitutionally vague in the context of the First Amendment. This Court has consistently emphasized that a law that contains "no standard for determining" how to satisfy a requirement of the law is constitutionally problematic. Kolender v. Lawson, 461 U.S. 352, 358 (1983). 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. Id. In the instant case, the inconsistent and arbitrary enforcement by the PTO of the immoral-orscandalous-marks provision suggests that the provision is unconstitutionally vague, in that the vagueness engenders trademark examiners' inconsistent applications of the provision. Cf. Tam, 137 S. Ct. at 1756 (acknowledging the "admitted vagueness of the disparagement test" in § 1052(a)); 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-scandalous-marks 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 as well as unconstitutional vagueness. Whether or not the Court agrees with our ultimate conclusion, however, our data may be useful to the Court's decision, and