The final bell may be tolling for Section 2(a) of the Lanham Act. Having declared that section’s ban on “disparaging” trademarks to be unconstitutional in its 2017 Matal v. Tam decision, the Supreme Court appears poised to rule similarly regarding the ban on “immoral and scandalous” marks.
In January, the Court granted certiorari in Iancu v. Brunetti. The government sought the high court’s review after the U.S. Court of Appeals for the Federal Circuit held that “§2(a)’s bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech.”
It is almost inconceivable that the Court will overrule the Federal Circuit given its decision in Tam, says Anne Naffziger, a shareholder in Leydig’s San Francisco Bay Area office.
“If you look at this with intellectual honesty, the same logic and reasoning the Court used in Tam to strike down the ban on ‘disparaging’ marks apply here,” Naffziger says. “It appears the Court agreed to hear the case to button up all issues relating to Section 2(a)’s continued viability.”
The case involves Erik Brunetti’s two applications for the trademark, “FUCT,” for athletic apparel. The United States Patent and Trademark Office (USPTO) refused to register the mark under § 2(a) of the Lanham Act, finding it comprised immoral or scandalous matter. Brunetti appealed to the Trademark Trial and Appeal Board (TTAB), which affirmed the initial findings.
Brunetti then appealed to the Federal Circuit on the heels of the closely watched Tam case. In overturning the TTAB’s decision, the Federal Circuit concluded that Section 2(a) was unconstitutional, regardless of which standard – strict scrutiny or intermediate scrutiny – it used to evaluate the ban’s viability.
“There can be no question that the immoral or scandalous prohibition targets the expressive components of speech” and is, therefore, subject to strict scrutiny, the court held. Since the ban requires the government to make “value judgments about the expressive message behind the trademark,” it cannot survive under the strict scrutiny standard.
Even if intermediate scrutiny applied to Section 2(a) as a regulation of commercial speech, the prohibition would still be unconstitutional because, as the court concluded, “the government does not have a substantial interest in protecting the public from scandalousness and profanities.”
The public, rather than the government, will decide what marks it considers obscene, profane, or offensive once the Court strikes down Section 2(a), Naffziger believes.
“If, as is likely, the Court concludes that it is not the USPTO’s job to regulate commercial speech in this way, it is going to be up to consumers to determine whether they want to engage with goods and services associated with these kinds of marks,” she says.