On Friday, December 15, 2017, the Federal Circuit held that the Trademark Act’s ban on registering immoral or scandalous marks is unconstitutional. In Re Erik Brunetti, the applicant appealed the Trademark Office’s refusal to register his mark FUCT used in connection with clothing apparel based on a finding that mark was comprised of immoral or scandalous matter. While the court agreed with the Trademark Office that the mark was scandalous due to its vulgar nature, the court held the First Amendment “protects private expression, even expression which is offensive to a substantial composite of the general public.” The court found that other works equally offensive have obtained federal protection under copyright law, and there was no reason to distinguish between the registration of trademarks and the registration of copyrights.
The Trademark Act’s bar on registration marks that are immoral or scandalous “targets a mark’s expressive message, which is separate and distinct from the commercial purpose of a mark as a source identifier.” Accordingly, the Trademark Act’s bar on immoral or scandalous matter did not survive strict scrutiny. Moreover, the restriction did not survive intermediate scrutiny because the government provided “no substantial government interest for policing offensive speech in the context of a registration program.” The Federal Circuit’s decision is in line with the Supreme Court’s ruling in In Re Tam, which held the disparagement provision of the Trademark Act unconstitutional.
Click here to read the Board’s decision.
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