On January 4, 2019, the U.S. Supreme Court granted certiorari in Iancu v. Brunetti. On appeal from the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”), the Supreme Court will answer the question of whether § 2(a) of the Lanham Trademark Act (“§ 2(a)”), which prohibits the federal registration of “immoral” or “scandalous” trademarks (“scandalous provsion”), is a violation of the First Amendment”™s free speech clause.
In 1990, Erik Brunetti founded the clothing brand “fuct,” an abbreviation for “Friends You Can”™t Trust,” and later filed a U.S. intent-to-use application for the mark FUCT in 2011. However, the USPTO trademark examiner refused to register the mark under § 2(a), finding the mark was scandalous because it was disparaging and totally vulgar. Next, Brunetti requested reconsideration and appealed to the USPTO Trademark Trial and Appeal Board (“TTAB”). The TTAB affirmed the examiner”™s decision to deny registration, finding substantial evidence that that the “general public would find this [mark] vulgar.” Subsequently, Brunetti appealed to the Federal Circuit.
On appeal, the Federal Circuit first set out to determine whether the mark FUCT was ambiguous and not vulgar, and therefore, subject to registration. However, the Federal Circuit found that the additional evidence offered by Brunetti in support of ambiguity and non-vulgarity was substantially outweighed by the contrary evidence offered by the TTAB. Thus, the Federal Circuit held the mark as scandalous due to its vulgar meaning. Next, the Federal Circuit analyzed whether § 2(a) requires that a mark must be more than “merely vulgar,” in order to be prohibited from registration. Relying on Federal Circuit precedent set forth in In Re Fox, the Federal Circuit reaffirmed that vulgarity alone is sufficient to establish that a mark is immoral or scandalous. Therefore, the Federal Circuit found that the TTAB did not err in concluding the mark was barred from registration under § 2(a).
Despite finding the mark was scandalous, the Federal Circuit continued its analysis by considering whether § 2(a) was a violation of the First Amendment”™s free speech clause. The Federal Circuit first noted the Supreme Court”™s recent holding in Matal v. Tam (“Tam”), which held § 2(a)”™s bar on disparaging marks was unconstitutional. Furthermore, following the same rationale set forth in Tam, the Federal Circuit concluded that the scandalous provision was a subjective test which regulated the expressive component of speech, not the commercial component. Due to the subjective nature of the regulation of expressive conduct, the Federal Circuit found the scandalous provision was unconstitutional. Additionally, the Federal Circuit went one step further and discussed the constitutionality of the scandalous provision if it strictly regulated the commercial component of speech.
Again citing to Tam, the Federal Circuit stated “trademark registration is neither a government subsidy nor a limited public forum.” Therefore, the government had no substantial interest in regulating speech in trademarks. Accordingly, the Federal Circuit concluded that even if the scandalous provision strictly regulated the commercial component of speech, it would still be unconstitutional.
By granting certiorari to this issue, the Supreme Court will decide whether § 2(a) of the Lanham Trademark Act, which prohibits the federal registration of “immoral” or “scandalous” trademarks, is a violation of the First Amendment”™s free speech clause. Given the Supreme Court”™s decision in Tam, it seems likely that the Supreme Court may find the scandalous provision unconstitutional.