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Trademark Practice Update: Scandalous? Immoral? It's all Good

On December 15, 2017, the U.S. Court of Appeals for the Federal Circuit held that the Lanham Act’s prohibitions on registering scandalous and immoral marks discriminated based on content, and violated the First Amendment (In re Brunetti, No. 2015-1109, 2017 WL 6391161 (Fed. Cir. 2017). The decision was not unexpected, given the U.S. Supreme Court’s ruling earlier this year in Matal v. Tam, which similarly found the prohibition on disparaging marks to be unconstitutional (137 S. Ct. 1744 (June 19, 2017).

What does this mean to brand owners? The ability to use a trademark was never at issue in either of these cases, simply the ability to protect a mark by federal registration. However, it will now be easier for the owners of disparaging, scandalous, and immoral brands to enforce their rights against infringers and counterfeiters. Federal registration provides notice of ownership, and certain presumptions in terms of ownership, validity, and exclusive rights as to the covered goods and services. Perhaps more importantly, federal registration allows the owner to record a registration with U.S. Customs and Border Protection, and can be used to enforce rights with online search engines, obtain social medial user names, and used in combating online counterfeiting.

© 2020 Sterne KesslerNational Law Review, Volume VII, Number 361


About this Author

Monica Riva Talley, Trademark Attorney, Sterne Kessler, Law Firm

Monica Talley brings more than 17 years of experience protecting some of the world's most recognizable brands to her role as a Director in the firm’s Trademark practice.  Ms. Talley specializes in strategic trademark counseling and portfolio management, developing anti-counterfeiting solutions and strategies, and trademark enforcement. 

Ranked as one of the leading trademark prosecution and strategy attorneys in Washington, DC, Ms. Talley is particularly noted for her global brand protection and commercialization strategies, and is lauded by clients for utilizing “her broad IP savvy...