April 15, 2019

Today, SCOTUS heard arguments in Iancu v. Brunetti, an appeal from the Federal Circuit’s decision in In re Brunetti, 877 F.3d 1330 (Fed. Cir. 2017) regarding the constitutionality of the Lanham Act’s ban on federal trademark registration of scandalous/immoral marks (see 15 U.S.C. § 1052(a) for the statutory provision at issue).

In In re Brunetti, after affirming that Brunetti’s proposed trademark (“FUCT”) is indeed scandalous, the Federal Circuit determined that the ban on scandalous/immoral marks is unconstitutional under either strict scrutiny or the lesser scrutiny afforded to commercial speech. 877 F.3d at 1349–50. Interestingly, the court noted that,

[a] snapshot of marks recently rejected under the immoral or scandalous provision reveals the breadth of goods and services impacted by § 2(a)’s bar on such marks, including speech occurring on clothing, books, websites, beverages, mechanical contraptions, and live entertainment. These refusals chill speech anywhere from the Internet to the grocery store.

877 F.3d at 1348. However, in dismissing the government’s argument that the ban directly advances its interest in “protecting the public from scandalous or immoral marks,” the court acknowledged that, “[r]egardless of whether a trademark is federally registered, an applicant can still brand clothing with his mark, advertise with it on the television or radio, or place it on billboards along the highway.” 877 F.3d at 1353. Thus, its conclusion that the ban chills speech is perhaps a tenuous one.

In any event, the outcome at the Supreme Court will likely be in accord with SCOTUS’s recent decision in Matal v. Tam, 137 S. Ct. 1744 (2017), in which the Court struck down the Lanham Act’s ban on registration of disparaging marks on the basis that “[i]t offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” Tam, 137 S. Ct. at 751. Time will tell!