An update on our prior blog about “Disparaging, immoral or scandalous” trademarks.
As published before The Supreme Court of the United States ruled on June 19, 2018 that disparagement provision of Section 2(a) of the Trademark Act is facially unconstitutional because it violates the Free Speech clause of the First Amendment. Section 2(a) of the Lanham Act bars the U.S. Patent and Trademark Office (“USPTO”) from registering scandalous, immoral, or disparaging marks. 15 U.S.C. § 1052(a). Finding this restriction unconstitutional, the Supreme Court ruled that the disparagement clause of the Lanham Act violates the First Amendment’s free speech clause. Matal v. Tam, 582 U.S. ___ (2017). See our blog discussing that decision here: https://tmmiami.com/disparaging/
That decision helped a U.S. Court of Appeals for the Federal Circuit, when it ruled that “Fuct, while vulgar, was protected speech under the First Amendment.” Erik Brunetti appealed a decision by the USPTO refusing to register his application for the trademark “fuct” for clothing. The Court of Appeals for the Federal Circuit struck down the second part of Section 2(a) of the Lanham Act that bars trademark hopefuls from registering material considered to be “immoral” or “scandalous.” The USPTO under its director Andrei Iancu, filed for writ of certiorari to the Supreme Court. The Court agreed to hear the case, with oral arguments heard on April 15, 2019.
The Court ruled in June 2019 that the restrictions of “immoral” or “scandalous” trademarks defined by the Lanham Act is unconstitutional as it permits the United States Patent & Trademark Office to engage in viewpoint discrimination, violating the First Amendment. Iancu v. Brunetti, No. 18–302, 588 U.S. ___ (2019). The court ruled “The that the “immoral or scandalous” bar similarly discriminates on the basis of viewpoint and so collides with this Court’s First Amendment doctrine.” Important to note the Court’s analysis that “the Lanham Act permits registration of marks that champion society’s sense of rectitude and morality, but not marks that denigrate those concepts.”
Of course, that doesn’t prevent, as suggested by Justice Alito that “Congress can adopt “a more carefully focused statute” that would prohibit the registration of “vulgar” marks without violating the First Amendment.”
The USPTO immediately issued a New Examination Guidance for Section 2(a)’s Scandalous Marks Provision after Iancu v. Brunetti.
On July 3 the USPTO published a Notice indicanting that after July 19, “a mark that may consist of or comprise “immoral” or “scandalous” matter is no longer a valid ground on which to refuse registration or cancel a registration. The portions of Trademark Manual of Examining Procedure (TMEP) §1203 that relate specifically to examination of immoral or scandalous matter no longer apply. Applications that received an advisory refusal under the scandalousness provision and were suspended will be removed from suspension and examined for any other requirements or refusals. If an application was previously abandoned after being refused registration under the provision, and is beyond the deadline for filing a petition to revive, a new application may be filed.”
Now that the Supreme Court has settled those cases, the questions are whether the Trademark Registry will be bombarded with vulgar and scandalous trademarks? The answer is most likely, a big YES! Will Congress enact a “a more carefully focused statute” that could ban “vulgar” trademarks, as suggested by Justice Alito? I doubt it! In the mean time, let’s keep filing those disparaging, immoral or scandalous trademarks.
I have helped countless small to medium size businesses protecting their disparaging, immoral or scandalous trademarks. I’d like to help you too!
Please contact our office if you wish to receive trademark information on how protect your brand.
Augusto Perera, Esq.
Intellectual Property, Business and Legal Affairs Attorney
Augusto Perera, P.A.
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