Posts Tagged: "immoral"

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.”

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.

Many other related issues remain ripe for consideration in Brunetti and future cases. Most significantly, are trademarks considered “commercial speech?”  If so, laws relating to trademarks might be subject to relaxed scrutiny for constitutional compliance rather than strict scrutiny… While Tam settled some issues related to The Slants, the Washington Redskins, and D*kes on Bikes, the decision’s full impact remains to be seen.  Brunetti seems to be a promising avenue for the Supreme Court to address some of the tangential issues left open by the Tam decision.

A little more than one year ago, the U.S. Supreme Court struck down the Lanham Act’s disparagement clause as unconstitutional in Matal v. Tam, 137 S. Ct. 1744 (June 19, 2017).  While Tam settled some issues related to The Slants, the Washington Redskins, and D*kes on Bikes, the decision’s full impact remains to be seen. Issues remain ripe for future consideration. Most significantly, are trademarks considered “commercial speech?”  If so, laws relating to trademarks might be subject to relaxed scrutiny for constitutional compliance rather than strict scrutiny.

In re Brunetti, the Federal Circuit reversed a Patent Trial and Appeal Board (“Board”) decision affirming a refusal to register the mark “FUCT” because it comprised immoral or scandalous matter under 15 U.S.C. § 1052(a) (“Section 2(a)”). While the Board properly relied on substantial evidence to support its conclusion, the bar against registering immoral or scandalous marks was held to be an unconstitutional restriction on free speech.

After Tam was decided without expressly finding Section 2(a) unconstitutional in its entirety, the Federal Circuit requested additional briefing on the impact of Tam to Brunetti. The government argued that Tam did not resolve the constitutionality of the immoral and scandalous provisions “because the disparagement provision implicates viewpoint discrimination, whereas the immoral or scandalous provision is viewpoint neutral.” While expressing its doubts, the Federal Circuit did not find it necessary to resolve that issue because regardless of whether the immoral and scandalous provisions discriminate based on viewpoint (which requires strict scrutiny), they clearly discriminate based on content (which requires intermediate scrutiny) and the provisions could not survive either level of review.

A decision to deny trademark registration for two marks to be used on marijuana related goods was handed down in late October by the USPTO’s Trademark Trial and Appeal Board. On October 27th, a TTAB judicial panel decided In re JJ206, LLC by refusing to register two trademarks which were being sought by JUJU Joints, a developer of pre-loaded cannabis oil devices. TTAB affirmed trademark examiner decisions that two standard character marks, “POWERED BY JUJU” and “JUJU JOINTS” cannot be registered for federal trademark protection “because Applicant’s identified goods constitute illegal drug paraphernalia under the [Controlled Substances Act].” JUJU Joints was seeking to use the marks in commerce for goods such as smokeless cannabis vaporizing apparatuses and cannabis delivery devices.

In the brief, the ABA takes no official opinion on whether the disparagement provisions of the Lanham Act are invalid in the face of constitutionally-protected free speech. The organization does want to correct what it sees as “certain principles of trademark law erroneously set forth by the court of appeals,” however. The ABA argues that Federal Circuit misapplied the basics of U.S. trademark law in confusing the separate concepts of mark validity and mark registrability. Specifically, the Federal Circuit’s decision seemed to indicate to the ABA that a determination of unregistrability for a mark on the principal register would also restrict the ability to use that mark in commerce.

Two cases making their way through the Federal courts may force the Supreme Court to consider the issue of what sorts of trademarks should be considered “disparaging,” and whether the government may lawfully prevent the registration of such trademarks… The Redskins appealed to the Fourth Circuit in August 2015 and the parties’ and amici briefs have been rolling ever since. As of April 25, 2016, the Redskins have petitioned the United States Supreme Court to review their case, skipping over the Fourth Circuit Court of Appeal.