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Supreme Court Strikes Down Ban on Registration of Immoral and Scandalous Trademarks

Note: try not to be scandalized, but this post contains bad language. You can determine for yourself whether or not it’s immoral. OK, read on…

Two years ago, the U.S. Supreme Court struck down a ban on the registration of disparaging terms as trademarks. That decision, in the case Matal v. Tam, held that part of §1052(a) of the Lanham Act, which prohibits the U.S. Patent and Trademark Office (USPTO, or just PTO) from registering terms that are disparaging as trademarks, is unconstitutional on First Amendment grounds. The Lanham Act is the U.S. Federal law that covers trademarks.

On June 24, 2019, the Court took the next step and in a widely anticipated decision, struck down the same code section’s ban on registration of terms that are “immoral” or “scandalous”. The 2019 case is Iancu v. Brunetti and the Court’s full opinion can be read here.

Erik Brunetti is the founder of the FUCT line of clothing. His trademark application had been rejected by the United States Patent and Trademark Office (USPTO) on the grounds that, you guessed it, the mark is “FUCT was immoral and scandalous based on the finding that the term is the past tense of FUCK or in alternative, the phonetic equivalent of FUCK”.

Note that Brunetti’s application was filed in 2011. You can take your case all the way to the Supreme Court, and you might win, but you had better be prepared to wait a long time for the wheels of justice to turn.

Brunetti appealed and, as above, the case eventually made its way to the Supreme Court. The Court held that the ban on registration of immoral and scandalous is unconstitutional because it discriminates on the basis of viewpoint. Justice Elena Kagan, writing for the Court, stated that:

…the statute, on its face, distinguishes between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them; those inducing societal nods of approvaland those provoking offense and condemnation. The statute favors the former, and disfavors the latter.

The USPTO quickly issued an Examination Guide stating that “The portions of Trademark Manual of Examining Procedure (TMEP) §1203 that relate specifically to examination of immoral or scandalous matter no longer apply.”

As a result, following the holdings in the Tam and Brunetti cases, immorality, scandalousness, and disparagement are no longer bars on the registration of trademarks by the USPTO.

Want to know if your trademark can be protected? Reach out to me.

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