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Supreme Court to Address Whether Trademark Protection is Permitted for Immoral, Scandalous Marks

The Supreme Court of the United States granted the US Patent and Trademark Office’s (PTO’s) request that it address whether the prohibition of federal trademark protection for “immoral” or “scandalous” marks is invalid under the Free Speech Clause of the First Amendment. Iancu v. Brunetti, Case No. 18-302 (Supr. Ct. Jan. 4, 2019). The question presented is:

Whether Section 1052(a)’s prohibition on the federal registration of “immoral” or “scandalous” marks is facially invalid under the Free Speech Clause of the First Amendment.

Brunetti filed an application to register the mark FUCT for a line of apparel. The PTO rejected the application based on § 2(a) of the Lanham Act, which prohibits protection for “immoral, deceptive, or scandalous” trademarks. Brunetti appealed to the US Court of Appeals for the Federal Circuit.

The Federal Circuit stayed the appeal pending the Supreme Court’s decision in Matal v. Tam, which addressed the “disparagement” provision of § 2(a). In Tam, the Supreme Court found that provisions of the Lanham Act prohibiting the registration of trademarks that “disparage” persons, institutions or beliefs were unconstitutional under the First Amendment’s Free Speech Clause. Following Tam, the Federal Circuit found that the “scandalous” provision of § 2(a) was also an unconstitutional content-based restriction on speech for the same reasons the “disparagement” provision was found unconstitutional (IP Update, Vol. 21, No. 1). The PTO appealed to the Supreme Court.

© 2020 McDermott Will & Emery


About this Author

Amol Parikh, McDermott Will Emery, Chicago, patent lawyer, Intellectual Property Litigation Attorney

Amol Parikh is an associate in the law firm of McDermott Will & Emery LLP and is based in the Firm's Chicago office.  He focuses his practice on IP litigation, counseling and prosecution. Amol has been recognized as a 2011 Illinois Rising Star in Intellectual Property by Law & Politics.  Rising Stars are lawyers under the age of 40 that have been in practice for 10 years or less.  No more than 2.5 percent of the lawyers in Illinois are named as Rising Stars.

Amol has...