USPTO Taking Fight Over Scandalous Trademarks to U.S. Supreme Court

The USPTO Has Filed a Petition for Certiorari with the U.S. Supreme Court that Seeks to Reinstate the Ban on Scandalous Trademarks

The U.S. Patent and Trademark Office (USPTO) has filed a petition for certiorari with the U.S. Supreme Court that seeks to reinstate the ban on scandalous trademarks. The Court has not yet decided whether to take the case.

Facts of Ianacu v. Brunetti

The case, Ianacu v. Brunetti, arises from the USPTO’s refusal of Erik Brunetti’s application to register the mark “FUCT” for his clothing line. A Trademark Examining Attorney relied on Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), which provides in pertinent part that a trademark shall be refused registration if it “[c]onsists of or comprises immoral…or scandalous matter.” A mark is considered scandalous or immoral if a “substantial composite of the general public” would find the mark “shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation.” 

The Trademark Trial and Appeal Board affirmed the denial, agreeing that “a substantial composite of the general public would find this designation vulgar.” It also concluded that “the Trademark Trial and Appeal Board is not the appropriate forum for re-evaluating the impacts of any evolving First Amendment jurisprudence within Article III courts upon determinations under Section 2(a) of the Lanham Act.”

On appeal, the Federal Circuit asked the parties to submit briefs explaining how the constitutionality of the scandalousness provision should be resolved in light of the Supreme Court’s decision in . In that case, the Court struck down the federal ban on registering disparaging trademarks, holding that it violated the First Amendment to the U.S. Constitution. “We now hold that this provision violates the Free Speech Clause of the First Amendment,” Justice Samuel Alito wrote. “It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

While the USPTO argued that the ban on scandalous marks is distinct because it is not based on the speaker’s viewpoint, the Federal Circuit ultimately concluded that it also violated the First Amendment. “[W]e conclude the provision impermissibly discriminates based on content in violation of the First Amendment,” the Federal Circuit’s opinion states.

In reaching its decision, the appeals court rejected the USPTO’s argument that Section 2(a) did not implicate free speech concerns because trademark registrations are a government subsidy or a limited public forum. It also concluded that ban on scandalous trademarks would not survive even under the less onerous intermediate scrutiny standard for commercial speech.

Notably, the Federal Circuit did agree that the “trademark at issue [‘FUCT’] is vulgar.” Nonetheless, it concluded that the “government has offered no substantial government interest for policing offensive speech” in the context of its trademark registration program. “There are words and images that we do not wish to be confronted with, not as art, nor in the marketplace,” the court explained. “The First Amendment, however, protects private expression, even private expression which is offensive to a substantial composite of the general public.”

USPTO Seeking SCOTUS Review

In its petition for writ of , the USPTO asked the Court to determine “[w]hether Section 1052(a)’s prohibition on the federal registration of “immoral” or “scandalous” marks is facially invalid under the Free Speech Clause of the First Amendment.

In support, the USPTO argued that the Federal Circuit’s holding that the ban on scandalous marks is facially invalid under the First Amendment was incorrect. “The scandalous-marks provision does not prohibit any speech, proscribe any conduct, or restrict the use of any trademark. Nor does it restrict a mark owner’s common-law trademark protections,” the USPTO wrote. “Rather, it simply directs the USPTO to refuse, on a viewpoint-neutral basis, to provide the benefits of federal registration to scandalous marks.”

The USPTO also attempted to distinguish the case from Matal v. Tam. “Although this Court recently concluded in Matal v. Tam, 137 S. Ct. 1744 (2017), that a different provision of Section 1052(a) was facially unconstitutional, no rationale garnered the assent of a majority of the Court, and neither of the lead opinions in Tam endorsed the approach that the court of appeals adopted here,” the USPTO argued. “Under the proper analysis, the First Amendment does not prohibit Congress from making vulgar terms and graphic sexual images ineligible for federal trademark registration.”

Given the high visibility and importance of First Amendment rights in view of Trademark Law, the U.S. Supreme Court may agree to hear this case. Scarinci Hollenbeck’s Intellectual Property attorneys will continue to monitor this case and post updates as they become available.

If you have any questions, please contact us

If you have any questions or you would like to discuss how the Court’s decision may impact your company’s trademark rights, contact me, Jason A. LaBerteaux, at 212-784-6922.