By Matthew J. Booth
The title of my blog is a tip of the hat to one of my favorite routines from the late comic, George Carlin, about the seven dirty words that you could not say on TV. Those seven dirty words ended up at the U.S. Supreme Court in 1978 in a case regarding the authority of the FCC to limit or control the use of the content on broadcast television. At that time, the Supreme Court ruled that the FCC did not violate the First Amendment in banning the use of the words in TV and radio broadcasts. This decision essentially established indecency regulation in American broadcasting.
Dirty words are again at the U.S. Supreme Court, but this time it’s whether the U.S. Patent & Trademark Office can prohibit the registration of marks that are “immoral” or “scandalous” in light of the Free Speech Clause of the First Amendment.
In this case, Brunetti, the Respondent, applied to register the mark FUCT for a line of clothing. The USPTO rejected the application based on § 2(a) of the Lanham Act, which prohibits protection for “immoral, deceptive, or scandalous” trademarks. For some context about the age of the language, the Lanham Act was passed in 1946 and replaced the Trademark Act of 1905 which superseded the Trademark Acts of 1881 and 1882.
Brunetti appealed to the U.S. Court of Appeals for the Federal Circuit. The Federal Circuit stayed the appeal pending the Supreme Court’s decision in Matal v. Tam, 15-1293 (U.S. 2017) Link, which addressed the “disparagement” provision of § 2(a). Tam was about a case that involved the band, The Slants, where all of the members were of oriental descent. The USPTO denied the application under the “disparagement” clause. On appeal, the Supreme Court found that provisions of the Lanham Act prohibiting the registration of trademarks that “disparage” persons, institutions or beliefs were unconstitutional under the First Amendment’s Free Speech Clause. After the Supreme Court’s Tam decision, the Federal Circuit found that the “scandalous” provision of § 2(a) was also an unconstitutional content-based restriction on speech for the same reasons the “disparagement” provision was found unconstitutional.
A summary of the government arguments in favor of the ban are: (1) the viewpoint is neutral, (2) it does not restrict speech but imposes a condition of availability of the trademark, and (3) it is reasonably related to legitimate government interests and does not reach outside the trademark registration program. Another argument by the government that hides and floats in along with the others is that the respondent can still use the trademark in commerce, that is, the government is not banning the use in commerce of the trademark by not granting a federal trademark registration.
Over the years, most of my practice is representing individuals and small companies. Getting a federal trademark registration is a powerful economic advantage in protecting a brand from both large and small competitors. Quite honestly, if a potential client does not have a federal trademark registration (or the ability to get one), then the chances of winning an infringement case are problematic. Given my experience, I am hopeful that the U.S. Supreme Court finds this section unconstitutional to keep the USPTO from engaging in a content-based review of trademark applications.
The case is Iancu v. Brunetti, No. 18-302 (U.S.) Link. Oral Arguments were on 04/15/2019.