US Supreme Court to hear arguments over ‘scandalous’ TMs
The US Supreme Court will today, April 15, hear arguments over whether it should permit the registration of “scandalous” or profane trademarks, a move which critics say would be unconstitutional.
The case, Iancu v Brunetti, is an appeal from the US Court of Appeals for the Federal Circuit which in 2017 overturned a decision of the Trademark Trial and Appeal Board (TTAB) and approved registration for the ‘Fuct’ mark.
The USPTO refused registration for the mark on the grounds that it was immoral or scandalous under section 2(a) of the Lanham Act.
This provision, also known as the disparagement clause, prohibits registration of trademarks covering “immoral, deceptive, or scandalous matter”.
The Supreme Court will now rule on whether this clause is in breach of the First Amendment, which guarantees free speech.
Megan Bannigan, counsel at Debevoise & Plimpton in New York, told WIPR that the decision “should have a significant impact on whether brand owners reliably can be expected to obtain registration for marks with shock value”.
She emphasised, however, that the Supreme Court’s ruling will not impact on whether businesses can use these marks in commerce.
“What is at stake here is whether or not they are entitled to federal registration, which obviously confers a host of benefits when it comes to enforcement,” Bannigan said.
Jason Bloom, partner at Haynes & Boone in Dallas, said that he expects the Supreme Court to find the disparagement clause unconstitutional. “I think the first amendment concerns far outweigh any concerns of the trademark office,” he said.
“Certainly, different policy arguments can be advanced for banning registration of immoral as opposed to disparaging marks, but I still don’t there is any justification for this type of government regulation of speech, especially with such subjective and amorphous concepts as immorality and scandal,” Bloom added.
Lawyers have also told WIPR that they expect the Supreme Court to draw on its previous ruling in Matal v Tam, in which the court sided with Asian-American band The Slants.
The US Patent and Trademark Office (USPTO) denied the band registration of a mark for their name, before the Supreme Court ruled that laws prohibiting the registration of “disparaging” marks violated the First Amendment.
William Stroever, co-chair of the IP department at Cole Schotz, told WIPR that he expected the court to “finish the work it started in Matal v Tam”.
“There is a close relationship between the disparaging trademark ban and the scandalous/immoral trademark ban, and the Supreme Court in Tam did note that ‘speech may not be banned on the ground that it expresses ideas that offend’,” Stroever said.
Danielle Johnson, associate at Goldberg Kohn, in Chicago, warned that if the court did not strike down the provision, it would create a “confusing doctrine in trademark law” in the wake of its prior ruling in Matal v Tam.
“If ‘scandalous’ or 'immoral’, the examining attorney must refuse the mark, but if found to be ‘disparaging’, he or she would be forbidden from refusing the mark under Matal v Tam,” she noted.
Erik Brunetti, owner of the ‘Fuct’ streetwear clothing brand, applied to register the mark with the USPTO.
The TTAB upheld the USPTO’s initial refusal of registration in 2014, after which Brunetti appealed the decision to the Federal Circuit.
The Federal Circuit overturned the TTAB decision, citing the Supreme Court’s Matal v Tam ruling.
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