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How Scandalous! SCOTUS Again Takes up Whether the Lanham Act Violates the First Amendment

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By Shalayne Pillar and David G. Barker

On Friday, the Supreme Court of the United States agreed to hear a case that will decide whether the federal ban on trademark protection for “scandalous” material is unconstitutional.  In re Brunetti follows the U.S. Patent and Trademark Office’s (“USPTO’s”) denial of trademark registration for the word “Fuct,” which held that the mark “comprises immoral . . . or scandalous matter” and thus could not be registered under Section 2(a) of the Lanham Act.  On appeal, the Federal Circuit sided with the applicant (discussed here), holding the statute violated the Free Speech provision of the First Amendment. The government then petitioned the Supreme Court to review the case.

The grant of certiorari comes less than two years after the Supreme Court unanimously ruled that that a ban on “disparaging” trademark registrations—also prohibited under Section 2(a)—violated the First Amendment. In Matal v. Tam, the Court held that trademarks are private speech, noting that “[t]rademarks have not traditionally been used to convey a Government message,” and “there is no evidence that the public associates the contents of trademarks with the Federal Government.” Following Tam, some assumed the ban on “scandalous” marks was covered by that ruling, but the USPTO has argued they could be treated differently.

The Tam case, alongside other recently decided cases, underscores the Court’s commitment to free speech protection.  However, since Tam, the Supreme Court has changed somewhat, with Justice Kennedy’s retirement and Justices Gorsuch and Kavanaugh joining the Court. Whether these changes will determine the constitutionality of trademark protection for “scandalous” material—as compared to “disparaging” material—is yet to be seen.