Ending a nearly two year debate the Supreme Court, in Iancu v. Brunetti No. 18-302 (U.S. June 24, 2019), finally reached a decision on whether the Lanham Act provision ban on the registration of “immoral or scandalous” trademarks is constitutional…the answer is no!
Erik Brunetti, an artist and entrepreneur founded a clothing line using the trademark “Fuct.” The proper pronunciation of Brunetti’s trademark is actually F-U-C-T (said letter by letter) which stands for “Friends U Can’t Trust”, however, it’s easy to see how it may be confused with the past tense of a, well, common curse word.
Brunetti attempted to register the trademark for the first time in 2011. The United States Patent and Trademark Office (“USPTO”) refused to register his trademark based on Lanham Act Section 2(a), 15 U.S.C. 1052(a) being that the mark was “immoral or scandalous.” Brunetti quickly appealed to the USPTO’s Trademark Trial and Appeal Board (TTAB), but they affirmed the rejection. So, Brunetti took the next step and filed an appeal in federal court.
Ironically, the same time Brunetti is fighting for his mark, there was another case in federal court addressing trademark eligibility – Matal v. Tam – under the same clause of the Lanham Act, for a mark the USPTO found to be disparaging. In Matal v. Tam – an all Asian rock band wanted to register their band name “The Slants” but were refused a trademark in the same way as Brunetti was refused for his “Fuct” mark. After going all the way up the appeal ladder to the Supreme Court, the disparagement clause relied on by the USPTO and the lower courts was found to be unconstitutional in violation of the First Amendment because the Supreme Court decided, “… if a trademark registration bar is viewpoint based, it is unconstitutional. And second, the disparagement bar was viewpoint based.” Basically, just because some people might find it disparaging doesn’t make it OK to prevent other people from saying it – i.e. the entire point of our Constitution’s protection for freedom of speech.
Back to Brunetti…in 2018 he won his appeal in a lower federal appeals court. However, not quite ready to allow Fuct any protection, the USPTO actually raised the matter to the SUPREME COURT OF THE UNITED STATES, and the Supreme Court agreed to hear the issues. Now, after six months the decision has been issued – in a 6-3 decision – clarifying that the language of the Lanham Act stating that a trademark can be refused if it is “immoral or scandalous” is unconstitutional.
The Iancu v. Brunetti opinion written by Supreme Court Justice Kagan gets right to the point – it’s unconstitutional to not allow words to be trademarked because certain people disfavor those words. Such “viewpoint” based analysis has no place in free speech says the Supreme Court.
The USPTO’s reliance on the “immoral or scandalous” bar in the Lanham Act has long been viewed as an attempt to regulate free speech and has denied some business owners federal trademark protection for their marks. The Supreme Court has just affirmed that free speech extends to choosing whatever terms you wish to represent your business identity. Now, should you choose a business name that is disagreeable to some, you may still proceed to request federal protection for your chosen trademark.
Iancu v. Brunetti, does not automatically modify the Lanham Act, that’s the legislatures job. Will they do it? Will they find a way narrow the limits of “immoral and scandalous” to make it possible for the USPTO to once again reject some vulgar, sexually explicit, and profane marks, as the USPTO suggested it might be possible to do. We will have to wait and see. For now, we can expect that the USPTO will issue updated guidelines to its trademark examining attorneys on the review and registration of trademarks under section 2(a) of the Lanham Act, noting that trademark registrations cannot be disqualified on the basis of being “immoral or scandalous.”
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