The Supreme Court of the United States granted the US Patent and Trademark Office’s (PTO’s) request that it address whether the prohibition of federal trademark protection for “immoral” or “scandalous” marks is invalid under the Free Speech Clause of the First Amendment. Iancu v. Brunetti, Case No. 18-302 (Supr. Ct. Jan. 4, 2019). The question presented is:
Whether Section 1052(a)’s prohibition on the federal registration of “immoral” or “scandalous” marks is facially invalid under the Free Speech Clause of the First Amendment.
Brunetti filed an application to register the mark FUCT for a line of apparel. The PTO rejected the application based on § 2(a) of the Lanham Act, which prohibits protection for “immoral, deceptive, or scandalous” trademarks. Brunetti appealed to the US Court of Appeals for the Federal Circuit.
The Federal Circuit stayed the appeal pending the Supreme Court’s decision in Matal v. Tam, which addressed the “disparagement” provision of § 2(a). In Tam, the Supreme Court found that provisions of the Lanham Act prohibiting the registration of trademarks that “disparage” persons, institutions or beliefs were unconstitutional under the First Amendment’s Free Speech Clause (IP Update, Vol. 20, No. 6). Following Tam, the Federal Circuit found that the “scandalous” provision of § 2(a) was also an unconstitutional content-based restriction on speech for the same reasons the “disparagement” provision was found unconstitutional (IP Update, Vol. 21, No. 1). The PTO appealed to the Supreme Court.