SUPREME COURT STRIKES DOWN BAN ON REGISTRATION OF IMMORAL OR SCANDALOUS TRADEMARKS

On June 24, 2019, the Supreme Court of the United States struck down the Lanham Act’s ban on registration of immoral or scandalous trademarks. Just two terms after the landmark decision in Matal v. Tam, 137 S. Ct. 1744 (2017), invalidating the Lanham Act’s bar to registration of disparaging trademarks, the Court held that the neighboring provision also impinged the right to free speech guaranteed by the First Amendment.

The case arose in the context of artist and entrepreneur, Erik Brunetti, attempting to register the trademark of his well-known clothing line, FUCT. The United States Patent and Trademark Office (“PTO”) refused registration of the mark based on the Lanham Act’s prohibition against registration of marks that consist of or comprise immoral or scandalous matter. 15 U.S.C. 1052(a). The test applied by the PTO to determine whether a mark violated that clause examined whether a “substantial composite of the general public” would find the mark “shocking to the sense of truth, decency, or propriety”; “giving offense to the conscience or moral feelings”; “calling out for condemnation”; “disgraceful”; “offensive”; “disreputable”; or “vulgar.” The Trademark Trial and Appeal Board (the “Board”) agreed that the mark was unregistrable under this standard.

On appeal, however, the Court of Appeals for the Federal Circuit, the reviewing court for decisions from the Board, found the “scandalous or immoral” bar to be an unconstitutional restriction on free speech in violation of the First Amendment. The Supreme Court agreed, holding the restriction was impermissibly viewpoint-based and resulted in discriminatory application of the law, just as it did in the Tam decision.

Please contact us with any questions about the Court’s recent ruling and how it may affect you, your business, or your clients.

The Court’s ruling can be found here.

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