The constitutionality of yet another portion of Section 2(a) of the Lanham Act will soon be determined. Following in the footsteps of the blockbuster decision in Matal v. Tam, 137 S. Ct. 1744 (2017) (“Tam”), the U.S. Supreme Court granted certiorari to Iancu v. Brunetti on January 4, 2019. In Matal v. Tam, the Supreme Court held that the prohibition in Section 2(a) of the Lanham Act against registering disparaging trademarks at the U.S. Trademark Office (“USPTO”) was an unconstitutional restriction on free speech. However, Section 2(a) also prohibits the registration of other categories of marks, including marks that are immoral and scandalous. It is the constitutionality of this prohibition which is at issue in Brunetti.

The scandalous mark that was refused registration is FUCT (allegedly an acronym for “Friends yoU Can’t Trust), a mark used by Erik Brunetti for many years for a clothing line. When he tried to register the mark at the USPTO, registration was refused on grounds that the mark was “scandalous.” Ultimately, the U.S. Court of Appeals for the Federal Circuit held the “scandalous” provision of the Lanham Act was unconstitutional. Although the Federal Circuit determined that the trademark was “vulgar,” it held that “the First Amendment … protects private expression, even private expression which is offensive to a substantial composite of the general public.” In re Brunetti, 877 F.3d 1330, 1338, 1357 (Fed. Cir. 2017). The court held that the ban on registration amounted to content-based discrimination on speech and the U.S. government had offered “no substantial government interest for policing offensive speech in the context of a registration program.” Id. at 57.

While citing heavily to Tam, the Federal Circuit’s ruling in Brunetti is slightly different from the Supreme Court’s reasoning in the Tam case. Brunetti, 877 F.3d at 1340-41. In Tam, the Supreme Court held that the “disparaging” ban was illegal viewpoint discrimination, meaning that it discriminated based on an opinion. Tam, 137 S. Ct. at 1763. In Brunetti, the Federal Circuit indicated that the “scandalous” ban was content-based discrimination, meaning it discriminated based on entire types of speech. Brunetti, 877 F.3d at 1341.

The Solicitor General argues that Tam is not controlling because the rationale for the unconstitutionality of the “disparaging” portion of the Lanham Act is different from the prohibition on “scandalous” marks. Specifically, since the “scandalous” clause is interpreted as being limited only to marks that contain “profanity, excretory or sexual matter,” the clause is, therefore “content-neutral.” By making this argument, the U.S. government appears to be attempting to analogize the situation to the limitations on speech imposed by the U.S. Supreme Court in cases involving obscenity and pornography.

Brunetti argues that the prohibition on “scandalous” marks is a viewpoint based refusal and that the statute contains no guidance on what is considered “scandalous.” Brunetti also argues that because refusal of registration based upon the “scandalous” clause is not consistently applied by the USPTO, it is not a content-neutral rule. Since the U.S. government selectively approves or refuses the content based upon the level of perceived offensiveness, as evidenced by the USPTO’s refusal to register some profanity, excretory and sexual content while allowing some to register depending on “how offensive” it is, Brunetti contends there is no neutrality as to content. Media organizations have also pointed out that the USPTO has issued registrations for similarly vulgar marks, such as “FCUK,” and “Fword.” Similar to Tam, Brunetti points out that profanity expresses a viewpoint and that the U.S. government’s opinion is that the viewpoint expressed is offensive. See Tam, 137 S. Ct. at 1751 (“Speech may not be banned on the ground that it expresses ideas that offend.”).

With oral arguments set for April 15, 2019, the Supreme Court will now decide “whether Section 2(a) of the Lanham Act’s prohibition on the federal registration of ‘immoral’ or ‘scandalous’ marks is facially invalid under the free speech clause of the First Amendment.” Cert. Granted, Iancu v. Brunetti, No. 18-302. It remains to be seen how the case will be decided, and whether the “immoral” restriction of Section 2(a) will be affected by the decision on what is “scandalous.” Like the Tam case, the outcome of the Supreme Court’s decision in Brunetti will have significant repercussions. Mintz will provide continued updates on this case as it progresses.