Federal Circuit Held That Bar On Registering Scandalous Trademarks is Unconstitutional
The Court of Appeals for the Federal Circuit recently held that the federal bar on registering immoral or scandalous trademarks is unconstitutional. The decision follows the U.S. Supreme Court’s similar ruling with respect to “offensive” trademarks.
Under the Lanham Act, the U.S. Patent and Trademark Office (USPTO) may refuse to register a 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.” A mark was 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.”
Supreme Court’s Decision in Matal v. Tam
In June, the U.S. Supreme Court struck down a federal ban on registering disparaging trademarks, holding that it violated the First Amendment to the U.S. Constitution. The U.S. Patent and Trademark Office (USPTO) initially denied Simon Shiao Tam’s application to register the mark “The Slants” in connection with his American-Asian dance band of the same name, concluding the mark was disparaging to people of Asian descent. Tam challenged the denial, arguing that the Lanham Act’s prohibition of disparaging marks was unconstitutional under the First Amendment. The Federal Circuit struck down the disparagement provision as unconstitutional, and the Supreme Court affirmed. “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.”
Trademarks at Issue in In re Brunetti
In 2011, Brunetti filed a trademark application for the term FUCT for use on athletic apparel. The Trademark Examining Attorney refused registration of the mark under Section 2(a) of the Lanham Act, citing that it comprises immoral or scandalous matter. According to the Trademark Examining Attorney, the term “Fuct” is the phonetic equivalent of the word “Fucked,” and, therefore is “vulgar, profane and scandalous slang.”
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 Tam, on the related issue of disparaging trademarks.
Federal Circuit Strikes Down Scandalous Trademark Ban
While the USPTO argued that the ban on scandalous trademarks is distinct from the ban on disparaging marks 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 noted. “The First Amendment, however, protects private expression, even private expression which is offensive to a substantial composite of the general public.”
Do you have any questions? Would you like to discuss the matter further? If so, please contact me, David Einhorn, at 201-806-3364.
Business Mediation: An Overview and Practical Tips
Business mediation is a confidential, voluntary process in which a neutral third party helps companies negotiate a resolution to a commercial dispute without going to trial. Because working with a mediator is very different from litigating in the courtroom, it is important to understand how commercial mediation works, when it makes sense for your dispute, […]
Top 5 Causes Leading to Construction Defect Litigation
The five most common causes of construction defect litigation are design defects, substandard materials, workmanship defects, code violations, and subsurface defects. Because these flaws can compromise a building’s integrity, functionality, or safety, they frequently lead to disputes involving multiple parties and high financial stakes. Key takeaways: What is Construction Defect Litigation? Construction litigation is complex, […]
How to Protect Your New Jersey Business When Going through a Divorce
The most effective ways to protect your business in a divorce are put in place before one begins: a prenuptial or postnuptial agreement, clean separation of business and personal finances, and divorce contingencies built into your operating or buy-sell agreements. If divorce is already underway, the priorities shift to establishing how the business is classified […]
The most common franchise disputes involve breach of contract, franchise termination and non-renewal, intellectual property rights, territorial encroachment, royalty and fee payments, franchisor support obligations, and violations of state franchise laws such as the New Jersey Franchise Practices Act. Franchisors and franchisees can often resolve these conflicts by providing written notice detailing the dispute and […]
Reputational Risk and Legal Exposure: Why New Jersey Businesses Must Manage Them Together
New Jersey businesses must manage legal and reputational risk together because modern disputes play out on two fronts at once: the legal proceeding itself and the court of public opinion, where customers, employees, investors, and business partners often reach conclusions long before a judge or jury has had the opportunity to evaluate the facts. Success […]
Eviction Is Not Always the End: Understanding Post-Possession Rent Claims in New Jersey and New York
No. An eviction does not automatically end a tenant’s obligation to pay rent. Post-eviction rent claims are common because recovering possession resolves who has the right to occupy the premises, but it does not extinguish the tenant’s contractual obligations under the lease. Whether unpaid or future rent remains owed depends on three factors: the lease’s […]
No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.
Sign up to get the latest from our attorneys!
Explore What Matters Most to You.
Consider subscribing to our Firm Insights mailing list by clicking the button below so you can keep up to date with the firm`s latest articles covering various legal topics.
Stay informed and inspired with the latest updates, insights, and events from Scarinci Hollenbeck. Our resource library provides valuable content across a range of categories to keep you connected and ahead of the curve.
Let`s get in touch!
Sign up to get the latest from the Scarinci Hollenbeck, LLC attorneys!
