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August 12, 2019 | By S&H
Posted in: S&H IP Blog | U.S. Court of Appeals For The Federal Circuit

Iancu v. Brunetti

Following up on our Winter 2019 Newsletter, on March 4, 2019, the U.S. Supreme Court affirmed the U.S. Court of Appeals for the Federal Circuit”™s (“Federal Circuit”) holding in Iancu v. Brunetti. Accordingly, the Supreme Court held that the portion of § 2(a) of the Lanham Act (“§ 2(a)”) which bars the federal registration of “immoral” or “scandalous” trademarks (“the scandalous bar”), is a violation of the First Amendment”™s free speech clause.

In its opinion, the Supreme Court first noted its decision in Matal v. Tam (“Matal”) where it held the Lanham Act”™s bar on the registration of “disparaging” trademarks (“the disparagement bar”) unconstitutional. In Matal, the Supreme Court explained that if a trademark registration bar is viewpoint-based, it is unconstitutional. The Supreme Court reasoned the disparagement bar allowed a trademark owner to register a mark if it was positive about a person, but not if it was demeaning. Accordingly, the Supreme Court held the disparagement bar was viewpoint-based, and therefore, unconstitutional.

Subsequently, the Supreme Court turned to the plain meanings of “immoral” and “scandalous” to determine if the scandalous bar was viewpoint-based. Upon analyzing the dictionary definitions of “scandalous” and “immoral,” the Supreme Court found that the scandalous bar “distinguishes between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them.” Therefore, the Supreme Court found the scandalous bar, like the disparagement bar, was unconstitutional for being viewpoint-based.

To further support its conclusion, the Supreme Court noted several instances where some trademarks were granted federal registration but others were not, despite containing similar subject matter. For example, when determining whether a trademark relating to drugs was subject to federal registration, the U.S. Patent and Trademark Office (“USPTO”) denied federal registrations for “YOU CAN”™T SPELL HEALTHCARE WITHOUT THC” for pain-relief medication, and “MARIJUANA COLA” and “KO KANE” for beverages because they inappropriately glamorized drug abuse. However, the UPSTO granted federal registration to “SAY NO TO DRUGS””REALITY IS THE BEST TRIP IN LIFE.” Despite understanding why the

USPTO rejected certain “immoral” or “scandalous” marks, the Supreme Court concluded the USPTO was, nonetheless, discriminating based on viewpoint.

Lastly, the Supreme Court rejected the USPTO”™s argument that the scandalous bar is constitutional because it only prohibits marks that are “vulgar” ”“ meaning lewd, sexually explicit, or profane ”“ which cannot be discriminated against based on viewpoint. The Supreme Court noted that while it may interpret ambiguous statutory language to avoid an unconstitutional reading, the language of §2(a)”™s scandalous bar was plain and unambiguous, and not limited to “vulgar” marks. Therefore, the Supreme Court reasoned that Congress clearly enacted §2(a)”™s scandalous bar with the intent to encompass subject matter that is subject to viewpoint-based discrimination.

Accordingly, the Supreme Court held the “scandalous” trademark statutory provision was a violation of the First Amendment”™s free speech clause. While this decisions permits the federal registration of previously prohibited marks, trademark applicants are still required to satisfy all other trademark requirements (i.e., use in commerce, and distinctiveness).


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