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Supreme Court Legal Update: Immoral and Scandalous Marks Andrei Iancu v. Erik Brunetti, No. 18-302

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On April 15, 2019, the Supreme Court heard oral arguments in the Iancu v. Brunetti case. This case, once decided, may have profound implications for how trademark protections will be granted in the future. In this article, we will take a look at how this case could impact the future of trademark.

Setting the Scene

This is a case between the Solicitor General and a business owner, Erik Brunetti. Brunetti owns a clothing brand called “FUCT” that he created in 1990. When the clothing company applied to register its trademark, the USPTO examining attorney rejected the application under Section 2(a) of the Lanham Act, the law that governs trademark registration. This section of the trademark law states that marks cannot be registered if they are “immoral” or “scandalous,” among other disqualifying criteria. Mr. Brunetti, after appealing the decision repeatedly, was finally given the chance to defend his trademark before the Supreme Court in early 2019.

Trademark, Reviewed

Before we go any further with the story, let’s take a moment to review basic trademark law. As we have written in the past, trademark protections are the intellectual property rights surrounding marks (including names, logos, symbols, catch phrases, and more) that identify the source of goods and services. In this case, Mr. Brunetti’s brand name, “FUCT,” identifies the clothing that his company produces. However, identifying the source of a good or service is not the only requirement for a trademark to be registrable with the USPTO. To be registered, a trademark must be

  • Distinctive (as opposed to descriptive) — this is what we call a “strong” mark
  • Dissimilar from any other marks
  • Unlikely to cause confusion for the consumer

The Question Facing the Court

A fourth requirement, that the trademark not be “immoral, deceptive, or scandalous,” has long been a part of trademark eligibility. However, this case raised the question: doesn’t requiring that marks not be “immoral” or “scandalous” infringe upon the First Amendment protection of free speech? As we know, freedom of speech is protected from infringement by the government, except in very specific circumstances. Brunetti argued that any restriction on the content of a trademark registration application would be a violation of his First Amendment rights.

The Argument

On April 15, 2019, the Supreme Court justices seemed to agree with Brunetti, although they did not seem to like it. While the justices did express distaste for Mr. Brunetti’s use of profane language, and the potential for even worse language to be protected by federal trademark, the Court seemed to hold firm on a precedent set in its 2007 decision (Matal v. Tam) that found that the federal trademark law’s prohibition on “disparaging” marks violated the First Amendment. Although no final decision has been rendered, this preference to protect the First Amendment right to Freedom of Speech over a federal policy priority of moral language.

In Tam, the Supreme Court determined that trademarks are private speech, not governmental, so there was no way to prohibit the protection of “disparaging” language under federal trademark law. In Brunetti, it seems, the Court is likely to extend this First Amendment protection to “immoral and scandalous” marks as well.

Let an Experienced Professional Help You Protect Your Brand

The law is ever-changing, and one of the benefits of working with an experienced legal professional is that you don’t have to keep up with these changes. We do it for you. If you are a business owner with a brand you want protected, click here to schedule a call with an experienced trademark attorney. Keep in contact with us for more updates on the Brunetti case, and any other brand-related legal news!

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