Posts Tagged: "Disparaging Marks"

How One TTAB Case Reveals Continued Examination Flaws Post-Tam and Brunetti

A case that is currently before the Trademark Trial and Appeal Board (TTAB), Proceeding No. 92071980, is no run-of-the-mill cancellation petition. Elevated Faith LLC v. GODISGHL, LLC,  concerns the right to register religious symbols and exposes critical flaws in trademark examination; in some ways it might be considered a progeny of Matal v. Tam and Iancu v. Brunetti. Naturally, it also involves a celebrity.

After Brunetti: The Trademark Bar Reacts to Fractured Decision

The Supreme Court issued its decision yesterday in Iancu v. Brunetti. As largely expected, the Court followed its own lead in Matal v. Tam and struck down the Lanham Act’s bar on “immoral or scandalous” trademarks as violating the First Amendment. Below are some insider perspectives on what the ruling means for brands and trademark practitioners going forward.

Brunetti Briefs: Section 2(a) Bar on Immoral or Scandalous Marks Fails Constitutional Test

On April 15, the Supreme Court will hear oral argument in Iancu v. Brunetti, a case the International Trademark Association (INTA) has remarked raises a critical issue for all trademark owners—namely, which trademarks reliably can be expected to obtain registration under the Lanham Act. At the heart of the case, and of the amicus brief we helped file for INTA this week, is whether free speech concerns should trump the statutory bar on registration of “immoral” or “scandalous” marks. INTA says the First Amendment should win out, and the statutory bar should fall. The category of marks at issue is exemplified by the FUCT apparel mark, owned by Erik Brunetti, to which the U.S. Patent and Trademark Office (USPTO) denied federal registration. After the Federal Circuit reversed, holding that Section 2(a)’s bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech, the U.S. government sought the Supreme Court’s review, and the Court granted certiorari. It must now decide whether the prohibition in Section 2(a) of the Lanham Act on the federal registration of “immoral . . . or scandalous” marks like FUCT is invalid under the Free Speech Clause of the First Amendment.

Supreme Court to Hear Second Case on Constitutionality of Lanham Act’s Scandalous and Disparaging Marks Provision

Whatever the Court decides, practitioners will welcome further clarity on the issue, since the Tam ruling was a 4 to 4 split decision with no real agreement on the rationale for the holding. “IP lawyers like certainty, and this case has created a lot of uncertainty,” said Monica Riva Talley. “There are a lot of applications on hold at the trademark office right now.”

Supreme Court Asked to Consider Immoral or Scandalous Trademarks

On September 7, 2018, the government filed a petition for writ of certiorari in the case relating to Eric Brunetti’s clothing brand, called FUCT. Although Brunetti has marketed various apparel under the FUCT mark since the early 1990s, the application at issue in this case was filed in 2011. The examiner rejected the application under Section 2(a), finding that FUCT “is the past tense of F*CK,” and “is scandalous because it is disparaging and [] total[ly] vulgar.” The Trademark Trial and Appeal Board agreed, finding that “the Trademark Examining Attorney has shown by a preponderance of the evidence that a substantial composite of the general public would find this designation vulgar.” If the U.S. Supreme Court agrees to hear the Brunetti case, it could have a substantial impact on “shock value” marks in commerce.