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Supreme Court's "Scandalous" Decision

The Supreme Court's Iancu v. Brunetti decision means the U.S. Patent and Trademark Office will be forced to register any mark, regardless of its content.

After the Supreme Court decided in Matal v. Tam that a Lanham Act prohibition against the registration of “disparaging” trademarks clashed with the First Amendment and was thus invalid, many believed that it wouldn’t be long before the Supreme Court Justices struck down a similar prohibition against the registration of marks including “immoral” or “scandalous” material under §1052(a). And they were right, it finally happened as predicted last Monday.

In its decision, the highest justice court of the United States of America held that the nearly century-old prohibition by the USPTO on the federal registration of “immoral” or “scandalous” trademarks, more specifically, to accept the registration of "FUCT" amounted to viewpoint discrimination in violation of the First Amendment to the U.S. Constitution.

For those not familiar with the Iancu v. Brunetti case, here is a (very) brief summary: "FUCT" is the clothing line founded by Mr. Erik Brunetti, who took on trademark examiners after being refused registration of his trademark. In December 2017, he prevailed against the contention that the government shouldn't have to subsidize distasteful marks and got the United States Court of Appeals for the Federal Circuit to hold that the Lanham Act's ban on immoral or scandalous matter was unconstitutional. This decision came out only months after the Supreme Court opinion involving Asian American Simon Tam, the front man of The Slants, convinced a majority of justices to strike down a different provision of the Lanham Act relating to the registration of disparaging marks. There is no doubt that the Tam case opened the door tothe decision in the Brunetti one.

The speech at issue in this case was the clothing company’s brand name, which comprises a word described during oral argument as “the equivalent of [the] past participle form of a well-known word of profanity.” This word, FUCT, had been denied trademark registration because it was determined to have “decidedly negative sexual connotations” and found to be a “a total vulgar” under this Lanham Act section.

The government argued that the trademark registration program doesn't really restrict speech. Individuals and businesses may hold trademark rights in a word or phrase used to identify goods and services in commerce, but that doesn't necessarily mean they need to and have the right to register it. Registering a trademark with the USPTO only provides certain advantages like good evidence of that trademark's validity.

The Supreme Court agrees with Brunetti that no principled reason exists for distinguishing the disparagement ban from the scandalous ban. “When is expressive material ‘immoral’’’? Answering the question, the Supreme Court Justices consulted the dictionary and found that, according “to a standard definition,” a word is immoral when it is “inconsistent with rectitude, purity, or good morals; wicked; or vicious.” The Court then concluded that the prohibition against immoral and scandalous marks is viewpoint- discriminatory because it allows registration of marks that accord with the viewpoint of purity or good morals or righteousness but denies registration to those marks that convey the opposite viewpoint. The Court concluded that a prohibition against the registration of “immoral” or “scandalous” trademarks cannot stand in light of the Free Speech Clause of the First Amendment. So, moving forward the USPTO will be forced to register just about any mark thrown its way, regardless of content and assuming it is not generic or confusingly similar to an already registered mark.


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