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Scandalous and Immoral Trademark Ban Ruled Unconstitutional

December 15, 2017
Post by Brandon W. Clark

Earlier today, the Federal Circuit ruled that the U.S. Supreme Court’s recent decisions striking down the Lanham Act’s ban on “disparaging” trademark registrations also means that barring “scandalous” or “immoral” trademarks is unconstitutional.

The ruling came in a case filed by Erik Brunetti, who appealed to the Federal Circuit in late 2014 after the Trademark Trial and Appeal Board refused his attempt to register “Fuct”, for clothing and apparel. The case was put on hold pending the Supreme Court’s decision in Matal v. Tam, a case involving the mark “The Slants”, which was originally deemed disparaging to Asian-Americans.

Section 2(a) of the Lanham Act bars the registration of a trademark that “consists 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.”

Following the ruling in Tam, many experts believed that the ban on “scandalous and immoral” trademarks could not survive the Supreme Court’s new precedent, but the USPTO nonetheless defended the provision.

U.S. Circuit Judge Kimberly A. Moore issued a 42-page opinion for the three-judge panel, writing, “There are words and images that we do not wish to be confronted with, not as art, nor in the marketplace, the First Amendment, however, protects private expression, even private expression which is offensive to a substantial composite of the general public. The government has offered no substantial government interest for policing offensive speech in the context of a registration program such as the one at issue in this case.”

Judge Moore went further saying that, “A trademark is not foisted upon listeners by virtue of its being registered, nor does registration make a scandalous mark more accessible to children. Absent any concerns that trademark registration invades a substantial privacy interest in an intolerable manner, the government’s interest amounts to protecting everyone, including adults, from scandalous content. But even when ‘many adults themselves would find the material highly offensive,’ adults have a First Amendment right to view and hear speech that is profane and scandalous.”

The case is in re: Brunetti, case number 15-1109, in the U.S. Court of Appeals for the Federal Circuit.

Brandon W. Clark is the Chair of the Copyright, Entertainment & Media Law Practice Group at McKee, Voorhees & Sease, PLC. For additional information, please visit www.ipmvs.com or contact Brandon directly via email at brandon.clark@ipmvs.com.


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