United States: Why The Supreme Court's Brunetti Review Is About More Than "Ridding The USPTO Of Potty-Mouth Overview"

Outright profanity and foul-mouth quips have seemingly become central in today’s ever-evolving pop culture. Take the hit HBO show Game of Thrones for example, where such words run rampant. Since 1946, however, profanity and scandalous soundbites have been precluded from federal registration as trademarks when Congress enacted § 2(a) of the Lanham Act. That is likely to change once the Supreme Court hands down its opinion in Iancu v Brunetti later this year. Hot on the heels of striking § 2(a)’s disparagement provision as a transgression of First Amendment safeguards in Matal v Tam, the Supreme Court will review the Lanham Act’s prohibition on the federal registration of immoral/scandalous trademarks.

The facts of this case are simple. Erik Brunetti applied to register the mark FUCT for various apparel. The USPTO refused registration on the ground that the mark is scandalous/immoral. The Trademark Trial and Appeal Board affirmed the decision. Brunetti appealed to the Federal Circuit, where his case sat in limbo until the Supreme Court decided Tam. Mere months after the Supreme Court’s decision, the Federal Circuit issued an opinion relying heavily on, and in lock-step with, Tam, finding the immoral/scandalous mark ban of § 2(a) of the Lanham Act unconstitutional under the free speech clause of the First Amendment.

Many were surprised to hear the Supreme Court would decide this case given the similarity between the disparagement clause struck down in Tam, and the immoral/scandalous provision at issue here. Could this mean the Supreme Court sees a distinction between the two clauses, and that the Federal Circuit opinion is on its way to reversal? Odds are that the Supreme Court will affirm the Federal Circuit based on the Tam Court’s broad statement that “speech may not be banned on the ground that it expresses ideas that offend,” and use the opportunity to clarify the level of scrutiny to be applied when dealing with such trademark registration issues.

Practically, striking the scandalous/immoral mark ban would have two immediate consequences. First, it will result in a great influx of vulgar marks on the Federal register (just search your favorite curse word on the USPTO’s trademark database to see for yourself). Second, practitioners will continue to move away from § 2(a), as another substantive provision from that section will have been striped. All that would remain of § 2(a) would be bans on deceptive marks, marks that falsely suggest a connection with or bring into disrepute specified categories, and primarily geographic indicators used in connection with wines or spirits.

But a decision for Brunetti would have more far-reaching consequences than simply ridding the USPTO of potty-mouth overview and further limiting the scope of § 2(a). Another Supreme Court decision trimming § 2(a) further based on viewpoint discrimination, as was the case in Tam, will likely prompt still more First Amendment challenges to other Lanham Act provisions. When determining infringement or registrability, courts and the USPTO are often called upon to evaluate the content of, or ascribe viewpoints to, marks. For example, a decision refusing registration of a mark under § 2(a) on grounds that it brings a religion into disrepute would presumably discriminate based on viewpoint in the same manner as marks that are either disparaging or scandalous/immoral. Further, assuming another provision of the Lanham Act is found to constitute content or viewpoint discrimination, a slippery slope will have been well established, placing at further risk any government determinations involving content-based or viewpoint-based substantive decisions involving rights to register a given trademark.

On the other hand, if the Supreme Court upholds the immoral/scandalous provision of § 2(a), an interesting dichotomy will be presented. Although the lines of demarcation between a disparaging mark and an immoral/scandalous mark may seem facially clear, the breadth and use of language creates the opportunity for many words or terms to be treated as both disparaging and scandalous/immoral. That will place trademark applicants and the USPTO alike in the vexing position of arguing whether some marks are merely disparaging, hence registrable, or scandalous, and hence unregistrable. A platform to showcase creative lawyering? Certainly. But it would predictably create inconsistent precedent, as courts struggle to draw such lines and define legal comfort zones.

Regardless of how the decision comes down, practitioners will either need to expand their vocabulary to accommodate a new slate of registrable marks, or fine tune distinctions between disparaging and scandalous/immoral marks. In the likely event the Court finds the provision unconstitutional, one should hope for a decision that is narrowly cabined. But another successful cull of § 2(a) would lead me to predict further like challenges.

Originally published in World Trademark Review

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