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IP Alert
IP Alert: Federal Circuit Declares “Immoral” and “Scandalous” Exceptions to Trademark Registration Unconstitutional

December 18, 2017

On December 15, the Federal Circuit, in the wake of the U.S. Supreme Court’s recent decision in Matal v. Tam, concluded in In re Brunetti that the provision of the Lanham Act that prohibits registration for “immoral” or “scandalous” matters is unconstitutional. Like Matal v. Tam, this decision erases substantial jurisprudence in this area and opens the door for registration of many marks that would not have been previously registrable.

Section 2(a) of the Lanham Act has long prohibited registration of certain types of trademarks, including any mark that “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.” In Matal v. Tam, the Supreme Court held that the “disparage” provision of Section 2(a) is unconstitutional on First Amendment grounds. In that case, the Trademark Office had refused registration of the mark “The Slants,” a band name devised ostensibly as a protest against the use of ethnic slurs. The Supreme Court concluded that this refusal could not be sustained in light of applicant Tam’s First Amendment rights.

While “The Slants” was created in response to an ethnic slur, no such noble protest was raised in today’s case, Here, the appellant, Erik Brunetti, owns a clothing line that is named after a four-letter word, apparently for the shock value of the term. The brand’s website describes itself as the “predecessor of subversive streetwear.” Mr. Brunetti sought registration of the mark, but the examining attorney refused to register the mark under Section 2(a), finding that the mark comprised “immoral or scandalous matter.” The Trademark Trial and Appeal Board affirmed the examiner, and Mr. Brunetti appealed to the Federal Circuit.

On appeal, Mr. Brunetti asserted two grounds of error. First, he argued that his mark did not fall within the category of “immoral” or “scandalous” marks, and second, he challenged the constitutionality of Section 2(a) as applied to non-registrability of such marks.

Mr. Brunetti’s assertion that his mark was not, in fact, an immoral term was contrary to precedent, and the court handily dismissed his argument. Next, the court turned to the question of the constitutionality of Section 2(a) of the Lanham Act. In a lengthy analysis, the court concluded that Section 2(a)’s bar on registration of immoral or scandalous marks creates an unconstitutional content-based restriction on speech. The court’s decision largely tracked the analysis of Matal v. Tam, which earlier had held that the prohibition on registration of disparaging marks was unconstitutional.

The judgment was unanimous, but Judge Dyk entered a concurring opinion stating he would have opted to preserve the constitutionality of Section 2(a) by limiting the scope of the holding. Specifically, Judge Dyk would have narrowed Section 2(a) to prohibit registration of marks that are obscene. Obscene matter is matter that falls outside of the purview of the First Amendment. But because there was “no suggestion that Mr. Brunetti’s mark is obscene,” Judge Dyk agreed that the judgment of the Trademark Trial and Appeal Board must be reversed.

Absent a successful appeal to the Supreme Court, going forward the Trademark Office will be unable to refuse registration on “immoral” or “scandalous” grounds. This decision will be hailed as a victory by free speech advocates, although it is likely not to be welcomed in certain quarters.

For more information on this case, please contact Fitch Even partner Joseph T. Nabor, author of this alert.

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