By: Spencer Sanders
Change is underway in the United States Patent and Trademark Office (“USPTO”). In June, the U.S. Supreme Court ruled on Matal v. Tam, a case involving a denial of registration of a mark based on Section 2(a) of the Lanham act. In Tam, the lead singer of The Slants, a rock-band made up entirely of members of Asian-American descent sought to have “The Slants” registered as a mark. An examining attorney from the USPTO denied the mark on the basis that the term may be disparaging to Asian-Americans. In a unanimous decision, the Court decided that the disparagement clause of the Lanham Act, which prohibits federal trademark registration for marks that may disparage any persons, living or dead, was facially invalid under First Amendment protection of speech. The Court stated that a refusal of this kind constituted discrimination based on unpopular speech.
The Court’s decision in Tam allows protection for marks that historically have been considered insensitive or disparaging. The decision also brings into question other parts of the Lanham Act, including its bar on “scandalous and immoral” marks, which covers profane, sexual and otherwise objectionable language. These questions will be answered soon however, when the United States Court of Appeals for the Federal Circuit makes its decision in In re Brunetti.
In Brunetti, a case very similar to Tam, the USPTO denied appellant Erik Brunetti’s application to register “FUCT” for his apparel brand as “scandalous” or “immoral” under the Lanham Act. Oral arguments took place on August 29, 2017. During the arguments, John R. Sommer, Mr. Brunetti’s attorney, argued that the scandalous and immoral provision of the Lanham act should be found unconstitutional under the same logic the Supreme Court used in Tam. The government argued that, unlike the disparagement clause, the ban on scandalous or immoral marks is viewpoint-neutral and therefore equally denied to everyone. The court is likely to announce its decision sometime in the next few months. The outcome will likely not come as a surprise, and the provision of the Lanham Act barring registration of scandalous or immoral marks will likely be found unconstitutional by the Federal Circuit.
The government is likely incorrect in its contention that the scandalous or immoral words are applied the same way to every applicant and, thus, content-neutral. The Lanham Act provides no definition for the terms “scandalous” or “immoral” and thus leaves the determination as to what is and is not scandalous or immoral up to the examining attorneys themselves. As a result, the acceptance and denials by the USPTO are wildly inconsistent and, thus, not equally applied to all applicants. To resolve this issue, the USPTO could develop a list of words that are unable to be registered regardless of use. This would cause certain words to be non-registerable, despite their use in a non-scandalous way. During oral arguments, Judge Moore used the example of “penis” to illustrate this point.
The Lanham Act ban on scandalous or immoral marks expands trademark law beyond its intended purpose of protecting consumers from confusion as to the source and quality of goods and services. It is not the purpose of trademark law, or the government in general, to protect consumers from being offended. Individuals have a First Amendment right to freedom of speech, even if that speech is deemed scandalous or offensive to some. There are other laws in place, such as those developed by the FCC to regulate television and radio broadcasts, that are meant to protect special classes of people, like children. Those other methods of protecting people from offensive material should be used, and trademark law should be used for its intended purpose: protecting consumers from confusion.
Editor’s note: The Federal Circuit published its decision in In re Brunetti on December 15, 2017, after this post was originally written. As predicted above, the court concluded that Section 2(a)’s bar on the registration of immoral or scandalous marks is an unconstitutional restriction on free speech. The full text of the opinion can be found here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1109.Opinion.12-13-2017.1.PDF.
 Matal v. Tam, 137 S. Ct. 1744 (2017).
 Id. at 1747.
 Id. at 1748
 Id. at 1749
 Katherine T. Allen & Adam C. Rehm, Historic IP Decision: Future of ‘Immoral,’ ‘Scandalous’ and ‘Disparaging’ Trademarks, National Law Review (July 3, 2017), https://www.natlawreview.com/article/historic-ip-decision-future-immoral-scandalous-and-disparaging-trademarks.
 15 U.S.C. § 1052(a).
 In re Brunetti, No. 2015-1109 (Fed. Cir. filed Sept. 22, 2014).
 In re Brunetti, Serial No. 85310960 (T.T.A.B. 2017).
 Oral Argument at 49:53, In re Erik Brunetti, No. 2015-1109 (D.C. Ct. App., argued Aug. 29, 2017), http://www.cafc.uscourts.gov/node/22332.
 Id. at 8:39.
 15 U.S.C. § 1052(a); See Allen, supra note 6.
 See Allen, supra note 6.
 Jimmy Hoover, Fed. Circ. Hammers Gov’t Defense Of ‘Scandalous’ TM Ban, Law360 (Aug. 29, 2017, 8:08 PM), https://www.law360.com/articles/958885/fed-circ-hammers-gov-t-defense-of-scandalous-tm-ban.
 See Megan M. Carpenter & Kathryn T. Murphy, Calling Bulls**t on the Lanham Act: The 2(a) Bar for Immoral, Scandalous, and Disparaging Marks, 49 Louisville L. Rev. 465 (2011).
 See Joan Vennochi, There’s No Hate Speech Exception to the First Amendment, Boston Globe (Aug 14, 2017), https://www.bostonglobe.com/opinion/2017/08/14/there-hate-speech-exception-first amendment/q9m4IqfQvbo24nnlnPor1O/story.html.
 See Anandashankar Mazumdar, Judges Grill Government on Vulgar, `Immoral’ Trademark Ban, Bloomberg BNA (Aug. 29, 2017), https://www.bna.com/judges-grill-government-n73014463864/.