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From Intellectual Property Law Daily, January 7, 2019

High Court takes case on constitutionality of ban on ‘immoral/scandalous’ trademark registrations

By Thomas Long, J.D.

The U.S. Supreme Court has agreed to accept a case involving the constitutionality of Lanham Act Section 2(a)’s prohibition against federal registration of trademarks that contain "scandalous" or "immoral" subject matter. The USPTO had filed a petition for certiorari seeking review of a decision by the U.S. Court of Appeals for the Federal Circuit, holding that the immoral/scandalous prohibition of Section 2(a) was facially invalid as an unconstitutional abridgement of free expression, and reversing the USPTO’s refusal to register the mark "FUCT" for street clothing. In June 2017, the Supreme Court struck down Section 2(a)’s proscription on registering "disparaging" marks, in the case of Matal v. Tam, 137 S. Ct. 1744.

The Trademark Trial and Appeal Board affirmed a trademark examining attorney’s rejection of Erik Brunetti’s application to register the mark FUCT under Section 2(a) on the ground that the mark was the phonetic equivalent of the vulgar term "fucked" and therefore ran afoul of Section 2(a). Section 2(a) states, in relevant part, that a trademark shall be refused registration if it "[c]onsists of or comprises immoral ... or scandalous matter." The Federal Circuit had held that evidence showing that a term was vulgar "in the context of contemporary attitudes" was sufficient to establish that a mark consisted of or comprised "immoral ... or scandalous matter" under Section 2(a).

In Tam, the High Court unanimously held that Section 2(a)’s prohibition against registering marks that "may disparage" persons, institutions, beliefs, or national symbols facially violated the First Amendment’s Free Speech Clause because it amounted to viewpoint-based discrimination. The Court also held that trademarks are private, not government, speech and that the federal trademark registration regime was neither government-subsidized speech, nor subject to regulation under the "government-program" doctrine. The Court expressly limited its holding in Tam to the provision banning registration of disparaging marks, leaving open the question of whether the ban on immoral or scandalous matter was constitutionally valid.

In the Brunetti case, the government argued before the Federal Circuit that Tam did not resolve the constitutionality of Section 2(a)’s bar on registering immoral or scandalous marks because, unlike the disparagement prohibition, the immoral or scandalous provision was viewpoint-neutral. The Federal Circuit did not reach the government’s viewpoint argument, but instead struck down the "immoral or scandalous" clause as an unconstitutional content-based restriction on speech. In the wake of the Federal Circuit’s decision, the USPTO issued an interim guidance document (Examination Guide 2-18, available here), instructing examining attorneys to issue an advisory refusal on the ground that a mark consists of or comprises scandalous or immoral matter under Section 2(a), in addition to any other examination issues raised in the application, and to suspend action on the application until the Brunetti case is resolved by the Supreme Court.

In its petition for review, the USPTO reiterated its argument that Tam was not controlling because the disparagement prohibition turned on viewpoint discrimination rather than legitimate content-based restriction. The government maintained that the bar on registering immoral or scandalous marks did not restrict speech because trademark rights were created not by federal law but by use in commerce. Brunetti had used his FUCT mark since 1990 and could legally continue to do so, albeit without the added benefits conferred by federal registration, such as the presumption of validity and the ability to recover certain statutory damages against potential infringers. The government also argued the federal trademark registration regime was a "limited public forum" that subjected content-based restrictions to a lesser degree of scrutiny and that the ban on registering immoral or scandalous marks constitutes a reasonable exercise of the federal government’s spending power—arguments that it had unsuccessfully made before the Federal Circuit. According to the USPTO, Brunetti used his FUCT mark in the context of "strong, and often explicit, sexual imagery that objectifies women and offers degrading examples of extreme misogyny."

The question presented by the USPTO’s petition is "Whether Section 1052(a)’s prohibition on the federal registration of ‘immoral’ or ‘scandalous’ marks is facially invalid under the Free Speech Clause of the First Amendment."

The petition in Iancu v. Brunetti, Dkt. No. 18-302, was granted on January 4, 2019.

Attorneys: Noel J. Francisco, Solicitor General, U.S. Department of Justice, for Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director, U.S. Patent and Trademark Office. John R. Sommer (John R. Sommer, Attorney-at-Law) for Erik Brunetti.

MainStory: TopStory Trademark

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