Following the U.S. Supreme Court’s landmark 2017 decision in Matal v. Tam striking down the Lanham Act’s “disparagement” clause as unconstitutional under the First Amendment’s Freedom of Speech Clause, the impact of the First Amendment on the registration of trademarks with the USPTO continues to be tested.
Section 2(a) of the Lanham Act provides that the USPTO may refuse to register any trademark that “[c]onsists 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.”
Erik Brunetti applied to register the mark FUCT in connection with apparel with the United States Patent and Trademark Office (USPTO). The USPTO refused registration of the mark on the ground that “FUCT” is the phonetic equivalent of the word “FUCKED”, so the mark fell within the Lanham Act’s ban of “scandalous” and “immoral” trademarks under Section 2(a). The USPTO’s decision was then affirmed on appeal before the Trademark Trial and Appeal Board (TTAB).
Brunetti then appealed to the United States Court of Appeals for the Federal Circuit (CAFC), which reversed the TTAB’s decision. Even though the First Amendment was again front and center before the CAFC, the government argued that Tam had not resolved the constitutionality of the immoral and scandalous provision of the Lanham Act because the immoral and scandalous provision is viewpoint neutral and the disparagement provision at issue in Tam involved viewpoint discrimination. Nevertheless, the CAFC unanimously found the immoral and scandalous provision unconstitutional under the First Amendment as well, since it clearly discriminates based on content and therefore could not survive the requisite judicial review involving content discrimination. The CAFC also rejected the government’s argument that trademark registration is a government subsidy program or, alternatively, a limited public forum, which are held to lower levels of First Amendment scrutiny. Interestingly, the Supreme Court had already rejected the government subsidy and public forum arguments in Tam.
Despite the CAFC’s unanimous and predictable decision, on September 7, 2018 the USPTO nevertheless filed at the Supreme Court a Petition for a Writ of Certiorari in Iancu v. Brunetti, asking the Court to review the CAFC’s decision. We will see if the Supreme Court determines if there is a legal issue not already addressed in Tam that will require it to now hear the Brunetti case.