Suppose that you want to register a trademark that identifies a source of goods or services for your business. What if the trademark is immoral or scandalous? Should you register your scandalous trademark with the U.S. Patent and Trademark Office? The answer may be YES!
In Matal v. Tam, 582 U.S. ___ (2017), the U.S. Supreme Court decided that the disparagement clause violated the Free Speech Clause of the First Amendment. The U.S. Supreme Court found that trademarks are private speech and not government speech, that trademarks are not a form of government subsidized speech, and that the registration of trademarks is not a type of government program in which some content- and speaker-based restrictions are permitted. Thus, the U.S. Supreme Court held that the disparagement clause violated the Free Speech Clause of the First Amendment. Since the disparagement clause violates the Free Speech Clause of the First Amendment, should the U.S. Supreme Court decide that the scandalous clause of Section 2(a) also violates the Free Speech Clause of the First Amendment?
Section 2(a) of the Trademark Act (15 U.S.C. § 1052) states in part:
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—
(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…
The First Amendment of the U.S. Constitution states:
Congress shall make no law respecting an establishment of religion, or prohibiting the free exercise thereof; or abridging the freedom of speech, or of the press; or the right of the people peaceably to assemble, and to petition the Government for a redress of grievances.
In the recent case of In re Brunetti, No. 2015-1109, the U.S. Patent and Trademark Office refused registration of the term “FUCT” for athletic apparel. The applicant, Brunetti, filed an appeal with the Federal Circuit. The Court of Appeals for the Federal Circuit held that the bar in § 2(a) against immoral or scandalous marks is unconstitutional because it violates the First Amendment. As a result, the Brunetti decision reversed the denial by the U.S. Patent and Trademark Office to register the mark and the U.S. Patent and Trademark Office appealed this decision to the U.S. Supreme Court.
The U.S. Supreme Court accepted the Iancu v. Brunetti case and recently heard oral arguments from counsel for both the U.S. Patent and Trademark Office and Erik Brunetti. The Justices tried to determine whether a scandalous mark reflects a viewpoint, which may be viewpoint discrimination. Counsel for the U.S. Patent and Trademark Office argued that § 2(a) should be narrowed to bar trademarks that are offensive, shocking to a substantial segment of the public because of their mode of expression, independent of any views that they may express. However, counsel for Brunetti argued that § 2(a) has been inconsistently applied over the years and that it should be unconstitutional.
The U.S. Supreme Court has previously decided that trademarks are private speech. Under the First Amendment, Congress cannot abridge the freedom of speech. As such, the U.S. Supreme Court should uphold the decision of the Court of Appeal for the Federal Circuit that § 2(a) against immoral or scandalous marks is unconstitutional because it violates the Free Speech Clause of the First Amendment as an abridgement of private speech.
What if your trademark is considered immoral or scandalous? Should you still file an application for trademark registration while waiting for Iancu v. Brunetti to be decided? Because of Tam, it is highly likely that the U.S. Supreme Court will agree that the scandalous clause violates the Free Speech Clause of the First Amendment and issue a decision in Iancu v. Brunetti soon. If the U.S. Supreme Court upholds the constitutionality of § 2(a) against immoral or scandalous marks, an application for an immoral or scandalous mark will be denied registration and you will only lose the cost of filing the application since examination of these marks is currently suspended. However, if the U.S. Supreme Court holds § 2(a) against immoral or scandalous marks unconstitutional, your application will be examined and registration on that basis cannot be denied. Since trademark priority is based on filing, it is recommended that the trademark application be filed immediately to reserve a place in line for priority and examination.
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