Posts Tagged: "Scandalous Marks"

This Week on Capitol Hill: SCOTUS Grants Cert in Two IP Cases and Strikes Down Bar on Immoral/ Scandalous Marks; Plus, AI in Counterterrorism and Fintech, Copyright Office Oversight

This week on Capitol Hill and vicinity, the Supreme Court issues its decision in Iancu v. Brunetti and issues orders in several other IP cases. Meanwhile, various House committees will explore the Federal Communications Commission’s broadband Internet coverage maps, state and local government cybersecurity issues, voting technologies, fintech, federal agency IT acquisition and artificial intelligence. Senate committee hearings this week will look at emerging technologies in surface transportation, the persuasive effects of machine learning in Internet platforms as well as a pair of drug patent bills. Elsewhere, the Information Technology and Innovation Foundation hosts an event looking at the effect of global trade tensions on technology supply chains and the Brookings Institution considers the potential of privacy legislation to address concerns with digital information-sharing systems.

Iancu v. Brunetti: the Briefs Examined

The U.S. Supreme Court on January 4th granted certiorari to take up Iancu v. Brunetti on appeal from the Court of Appeals for the Federal Circuit. The case asks the nation’s highest court to answer the question of whether the Lanham Act’s prohibition on the federal registration of “immoral” or “scandalous” trademarks is facially invalid under the First Amendment’s free speech clause.

The Solicitor General is arguing that Erik Brunetti has no right to require the government to register a scandalous mark or to inscribe the term on the Federal Register. Brunetti’s reply pushes back, pointing to instances where the USPTO approved trademark registrations for profane, excretory or sexual terms.

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.

Matal v. Tam: What’s New and What to Watch in Registration of Disparaging, Immoral, and Scandalous Trademarks

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.

Disparaging, Immoral, and Scandalous Trademarks Since Matal v. Tam

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.