Federal Circuit Strikes Down Statute Banning Scandalous And Immoral Trademarks

Key Points

The Federal Circuit held that the "immoral or scandalous" clause of Lanham Act § 2(a), which prohibits registration of a trademark that "consists of or comprises immoral or scandalous matter," is unconstitutional under the First Amendment's Free Speech Clause. The court held that the challenged clause was an impermissible content-based discrimination against protected expressive speech and failed strict scrutiny. The government's argument that trademarks are purely commercial speech, which receives a lesser form of constitutional scrutiny, did not save the "immoral or scandalous" clause. In a widely anticipated decision, the Federal Circuit last week in In re Erik Brunetti, No. 2015-1109 (Fed. Cir. December 15, 2017), held that a provision of the Lanham Act barring "scandalous" or "immoral" trademark registrations violated the First Amendment. The Federal Circuit's decision follows the Supreme Court's June 2017 First Amendment decision in Matal v. Tam1 unanimously striking down the Lanham Act's "disparagement clause," which prohibits federal registration of trademarks disparaging persons, institutions, beliefs or national symbols.

Facts

Appellant Erik Brunetti is an entrepreneur who owns the clothing brand "fuct," which he founded in 1990. In 2011, two individuals filed an intent-to-use application for the mark "FUCT" for various items of clothing. The original applicants assigned the application to Brunetti, who amended it to allege use of the mark. The examining attorney refused to register the mark under § 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), which prohibits registration of a trademark that "consists of or comprises immoral or scandalous matter," and the Patent Trial and Appeal Board (the "Board") affirmed. While Brunetti's appeal to the Federal Circuit was pending, the Supreme Court issued its decision in Tam, and the Federal Circuit requested additional briefing on the impact of the Tam decision.

Ruling

The Federal Circuit (with one judge concurring in the judgment) reversed the Board's holding that Brunetti's mark was unregistrable under § 2(a).

On appeal, the Patent and Trademark Office (PTO) conceded that § 2(a)'s bar on registering immoral or scandalous marks was a content-based restriction on speech. Instead, the PTO argued that § 2(a)'s content-based bar on registering immoral or scandalous trademarks did not implicate the First Amendment because trademark registration is either a government subsidy program or...