January 7, 2019
As I reported previously, following the Supreme Court’s landmark ruling that the Lanham Act’s statutory bar to registration of “disparaging” trademarks ran afoul of the First Amendment, the United States Court of Appeals for the Federal Circuit struck down a companion portion of the federal trademark law that precluded registration of “immoral” or “scandalous” marks. The Federal Circuit found that the mark at issue – Erik Brunetti’s “FUCT” apparel mark – was “vulgar,” and it rejected the contention that the mark was an acronym of “Friends You Can’t Trust.” But, the appellate panel struck down the statutory ban on “scandalous” marks as impermissible content-based discrimination on First Amendment free speech rights for which the government offered “no substantial government interest” in regulating in the context of trademark registration.
On Friday, in Iancu v. Brunetti, the U.S. Supreme Court agreed to decide whether the Federal Circuit had correctly found the trademark law’s ban on “scandalous” materials to be impermissible. Many had believed, as the Federal Circuit found, that because the Court struck down the ban on disparaging trademarks, the Court would also invalidate the ban on “scandalous” marks. The PTO argued, however, that the “scandalous” mark ban should be treated differently. The grant of certiorari suggests that some on the Court may see a distinction between the ban on “disparaging” marks it invalidated and the ban on “immoral” or “scandalous” marks. I will update you after the Supreme Court’s ruling, which is expected by early summer.
This article is intended only as a general discussion of these issues. It is not considered to be legal advice or relied upon. If you need assistance with a particular IP, commercial or employment issue, including concerning trademark-related issues, Larry Brocchini would be pleased to consider providing additional details or advice about specific situations.