On December 15 2017, In re Brunetti, a three-judge panel of the Court of Appeals for the Federal Circuit held that although the mark FUCT comprises immoral or scandalous matter, it is still federally registrable because the bar on registering such marks set out in Section 2(a) of the Lanham Act is an unconstitutional restriction of free speech, thereby violating the First Amendment.

This decision is similar to the Supreme Court's recent decision in Matal v Tam (137 S Ct 1744 (2017)), which held that the Section 2(a) bar on the registration of disparaging marks was likewise an unconstitutional restriction of free speech. Within only a few months, the scandalous, immoral and disparaging mark bars have been chipped out of Section 2(a) of the Lanham Act.

The Federal Circuit rejected the government's argument that the immoral or scandalous mark bar was valid because trademark registration is either a government subsidy programme or a limited public forum, which permits the government to limit speech. In turn, the Federal Circuit found that this bar did not survive strict or intermediate scrutiny, and was thus unconstitutional.

In a concurring opinion, Judge Dyk argued that the immoral and scandalous bar could be saved by limiting its scope to bar obscene marks only. The majority (Judges Moore and Stoll) rejected this limitation as unreasonable:

"There is no dispute that an obscene mark would be scandalous or immoral; however, not all scandalous or immoral marks are obscene… We cannot stand in the shoes of the legislature and rewrite a statute."

This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.

For further information on this topic please contact Douglas Sharrott at Fitzpatrick, Cella, Harper & Scinto by telephone (+1 212 218 2100) or email (dsharrott@fchs.com).The Fitzpatrick, Cella, Harper & Scinto website can be accessed at www.fitzpatrickcella.com.