The Federal Circuit Strikes Ban on Registering “Immoral” or “Scandalous” Trademarks

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By Alesha Dominique

The U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) has struck down the Lanham Act’s ban on the registration of “immoral” or “scandalous” trademarks as an unconstitutional restriction of free speech under the First Amendment.  See In re: Erik Brunetti, No. 2015-1109 (Fed. Cir. Dec. 15, 2017).  The ruling comes less than six months after the U.S. Supreme Court’s decision in Matal v. Tam, 137 S. Ct. 1744 (2017), in which it similarly struck down the Lanham Act’s ban on “disparaging” marks as unconstitutional under the First Amendment.

In In re: Erik Brunetti, the Federal Circuit reversed the Trademark Trial and Appeal Board’s (“Board”) ruling that the mark FUCT is not registrable for various items of apparel because it is a derivative of the word “fucked,” and therefore comprises immoral or scandalous matter under Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a).  The Federal Circuit held that while the Board did not err in concluding that the mark is vulgar, and therefore scandalous, Section 2(a)’s “bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech.”

The Federal Circuit concluded that the test used by the U.S. Patent and Trademark Office to prohibit immoral or scandalous marks, which is whether a “substantial composite of the general public” would find the mark “shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; giving offense to the conscience or moral feelings; or calling out for condemnation,” targets the expressive components of speech, and makes value judgments about the expressive messages behind trademarks.

The Federal Circuit found that because Section 2(a)’s prohibition on the registration of immoral or scandalous trademarks regulates the expressive components of speech, not the commercial components of speech, a “strict scrutiny” standard of review applied to determine the constitutionality of the ban, and there was no dispute that the ban could not survive the strict scrutiny standard.  Even if Section 2(a)’s ban was treated as a regulation of purely commercial speech, the Federal Circuit found that the ban is unconstitutional because the government failed to demonstrate that the restriction would advance a substantial governmental interest and that it is narrowly tailored to achieve that objective.

The Federal Circuit noted that while it is not eager to see a proliferation of highly offensive and shocking images and words in the marketplace, similarly offensive images and words have secured copyright registration by the government.  The Federal Circuit stated, “[t]he First Amendment . . . protects private expression, even private expression which is offensive to a substantial composite of the general public.”

It remains to be seen whether the U.S. Patent and Trademark Office will ask the U.S. Supreme Court to review the Federal Circuit’s decision.  In the meantime, it is highly likely that companies with edgy or racy brands will flood the U.S. Patent and Trademark Office with applications for the registration of marks for which registration was previously unavailable.

The Federal Circuit’s full opinion can be found here.

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