2017 proved to be a year of significant change for US trade mark law – specifically regarding Section 2(a) of the Lanham Act, which governs the registration of immoral, scandalous or disparaging marks. In re Brunetti – the latest Court of Appeals for the Federal Circuit opinion relating to Section 2(a) – the Court concluded that barring registration of a scandalous or offensive mark violates constitutional free speech rights.
The decision comes to almost no one’s surprise after the US Supreme Court struck down the disparagement provision of the same Lanham Act paragraph in the earlier Matal v Tam decision on the same free speech grounds.
The FUCT application
Erik Brunetti attempted to register the mark FUCT in the USPTO in connection with various apparel goods (serial number 85310960). The Trademark Trial and Appeal Board (TTAB), affirming the trademark examining attorney’s decision, refused registration on the grounds that the mark “comprise[d] immoral or scandalous matter under 15 USC § 1052(a) (§2(a))”. On appeal, the Federal Circuit held that “the government has not presented us with a substantial government interest justifying the §2(a) bar on immoral or scandalous marks”.
It concluded that, while the mark in issue is “vulgar”, and that it is “not eager to see a proliferation of such marks in the marketplace”, “[t]he First Amendment…protects private expression, even private expression which is offensive to a substantial composite of the general public.” And since the government had “offered no substantial government interest for policing offensive speech in the context of a registration program such as the one at issue in [the] case, … the bar in §2(a) against immoral or scandalous marks is unconstitutional because it violates the First Amendment.”
As noted above, just months before the Brunetti decision, the US Supreme Court affirmed the decision of the Federal Circuit. in another §2(a) case that made widespread headlines in Matal v Tam. In that case, Simon Tam, the lead singer of an Asian American rock band, appealed the TTAB’s §2(a) disparagement denial of registration of the band’s name, “The Slants”, to the Federal Circuit.
That Court ruled § 2(a) of the Lanham Act unconstitutional on the grounds that “the disparagement clause violates the Free Speech Clause of the First Amendment”. On Certiorari, the Supreme Court reviewed the decision, and in June 2017, affirmed the judgment of the Federal Circuit, striking down the §2(a) disparagement bar as an unconstitutional violation of the Free Speech Clause. While the Tam decision was not fully dispositive of the issue of registration of “immoral or scandalous” marks in §2(a), most observers agreed that the writing was on the wall for the demise of those provisions in Brunetti.
What will come next?
In many cases, the finding that a statute or statutory provision is unconstitutional invites a “re-drafting” by the Congress to meet constitutional standards. However, even the Federal Circuit in Brunetti found that there is likely no “reasonable definition” of the statutory terms scandalous or immoral that would meet those standards, leaving us all to be mortified, or – depending on your viewpoint – entertained, by all the new registrations sure to come.
Robert J Kenney is a Partner at Birch Stewart Kolasch & Birch, LLP and a member of the IP Emerging Issues Team. Download the Team’s recently posted guide to “Immoral, Scandalous and Offensive Marks” from its reports page