By Tyler J. Fortner and David G. Barker
Last Friday, in In re Brunetti, the Federal Circuit held that the ban on “scandalous and immoral” trademarks under 15 U.S.C. § 1052(a) is unconstitutional. The decision follows the June 19, 2017, Supreme Court decision, Matal v. Tam (discussed here), which held that the clause prohibiting marks that “disparage” in the same statute is unconstitutional.
In Tam, the Court held that the PTO’s refusal to register the Asian-American band name, “THE SLANTS,” violated the First Amendment. Relying on Tam, the Federal Circuit reversed the PTO’s refusal to register “Fuct” as a trademark. Judge Moore acknowledged that “[t]he trademark at issue is vulgar.” But she continued, “[t]he First Amendment . . . protects private expression, even private expression which is offensive to a substantial composite of the general public.” In Tam, the Supreme Court classified the clause prohibiting marks that “disparage” as a “viewpoint restriction,” subject to strict scrutiny, but the Federal Circuit classified the “scandalous and immoral” clause as a “content-based restriction,” subject to lower intermediate scrutiny.