Scandalous Trademark Registration Ban Struck Down


Detroit Michigan Trademark Attorney: The Lanham Act is FUCT! 

The US Supreme Court on Monday ruled in Iancu v Brunetti that the Lanham Act (“the Trademark Act”) cannot prohibit the registration of “immoral or scandalous” trademarks. 

The statutory provision in question, 15 USC 1052(a), prohibits such trademarks from being registered. 

The question before the Supreme Court was whether this prohibition passed muster under the First Amendment, and the Court held that it did not. 

Detroit Michigan Trademark Attorney: Background of the Case

The case arose from the US Patent & Trademark Office’s (USPTO) denial of the trademark application for registration of artist and designer Erik Brunetti’s FUCT clothing line under the above provision. 

The examining attorney at the USPTO and the USPTO’s Trademark & Trial Board (TTAB) determined, for obvious reasons, that the brand was “vulgar” with “decidedly sexual connotations. Those bodies reviewed the brand’s website and didn’t like what they saw there, either. 

Brunetti challenged the decision at the Court of Appeals level, where it was held that the statutory provision violated the First Amendment. 

On further appeal, the Supreme Court agreed. 

Detroit Michigan Trademark Attorneys: No Discrimination Based on Viewpoint Allowed

The Supreme Court’s decision swung on the basic premise that a statute that is not “content neutral” impinges on the First Amendment’s guarantee of freedom of expression. It found the statute overly broad, capable of encompassing nearly anything that a subjective reviewer at the USPTO, with his or her own prejudices and points of favor or disfavor, could subjectively consider to be “immoral” or “scandalous.”

The Court reviewed a litany of prior USPTO decisions, noting that proposed trademarks involving the use of apparently pro-drug marks were denied approval while anti-drug messages were approved, and likewise for anti-religion (or allegedly anti-religion) vs. pro-religion, Al-Qaeda disapproval vs. “War on Terror” approval–and so on. 

The flexibility with which a subjective moralizing viewpoint could hold sway over an application was fatal. 

“Viewpoint bias” invalidated the statute regardless of the government’s alleged legitimate goals or “permissible applications,” period. 

Detroit Michigan Trademark Attorney: Immoral or Scandalous Trademarks, the Bottom Line

15 USC 1052(a) was simply invalidated by the Supreme Court’s decision in this case. It was not re-construed or re-interpreted, nor did the Court allow the USPTO or the TTAB any ability to weigh one consideration against another in utilizing the statutory provision in future cases. The Court did not leave the provision in place with any test for further use, or take any other step to leave it intact. 

The Court instead invited Congress to re-draft a new provision if it wanted morality to weigh against an application for trademark registration. 

Only time will tell if Congress will accept that invitation. For now, the bottom line is that this consideration need no longer play a role a proposed mark’s registrability. 

Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting craft brewers, vintners, distillers, and others in all industries with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.

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