This blog has followed the evolving judicial views concerning disparaging trademarks, culminating in the Supreme Court’s decision in in Matal v. Tam, 137 S. Ct. 1744 (June 19, 2017). Our extensive coverage can be found here. We have also followed the closely related issue of the “immoral or scandalous” clause presented in In re Brunetti, 877 F.3d 1330 (Fed. Cir. Dec. 15, 2017) here, where the Federal Circuit followed its earlier instincts that that the “immoral . . . or scandalous” clause is an unconstitutional violation of the First Amendment’s free speech clause. On September 7, 2018, the government filed a petition for writ of certiorari in the case, which is now captioned Iancu v. Brunetti, No. 18-302. On January 4, 2019, the Supreme Court granted the petition for review.
The case involves Erik Brunetti’s two applications for the trademark FUCT for athletic apparel. The United States Patent and Trademark Office, Trademark Examining Attorney refused to register the mark under § 2(a) of the Lanham Act, finding it comprised immoral or scandalous matter. The Examining Attorney reasoned that FUCT is the phonetic past tense of a vulgar word, and is therefore scandalous. Brunetti appealed to the Trademark Trial and Appeal Board, which affirmed the findings of the Examining Attorney.
Brunetti appealed to the Federal Circuit on the heels of the closely watched Tam case. The Federal Circuit reversed, holding that “substantial evidence supports the Board’s findings and it did not err concluding the mark comprises immoral or scandalous matter. We conclude, however, that § 2(a)’s bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech. We therefore reverse the Board’s holding that Mr. Brunetti’s mark is unregistrable.”
In its petition for a writ of certiorari, the government first asserts that Tam is not controlling in Brunetti. The government argues that the eight justices who decided Tam all agreed on the result, but “[n]o rationale garnered the assent of a majority of the Court.” The government also argues that Tam is not controlling because it was decided on viewpoint grounds, whereas a ban on vulgar or obscene expression is viewpoint-neutral.
Although the government argues that “immoral and scandalous,” unlike “disparaging,” is viewpoint neutral, that argument ignores political reality. The news today is replete with stories of politically based biases on both sides of the aisle. It does not take much imagination to conjure a scenario in which a Proud Boys mark or a NARAL mark would be seen as “immoral and scandalous” to certain USPTO examiners, or in certain parts of the country. It will be interesting to see why the Supreme Court decided to weigh in again on the constitutionality of the Section 2(a), 15 U.S.C. § 1052(a), ban on registration of a trademark that “[c]onsists 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.”