16 April 2019Trademarks

SCOTUS likely to overturn ‘scandalous’ TM ban: lawyers

The US Supreme Court is likely to overturn the ban on registering scandalous trademarks following oral arguments in Iancu v Brunetti yesterday, lawyers have told WIPR.

The US Patent and Trademark Office (USPTO) is appealing the decision of the Federal Circuit to permit registration of Erik Brunetti’s ‘Fuct’ streetwear mark, citing section 2(a) of the Lanham Act.

This so-called “disparagement clause” prohibits registration of trademarks concerning “immoral, deceptive, or scandalous matter”.

Marshall Schmitt, partner at  Michael Best & Friedrich in Chicago, told WIPR that proceedings yesterday marked a “rare instance when the Justices who weighed in all appeared to be grappling with the same concerns about the statute”.

“The comments from the court evidenced a clear sentiment that the statute is likely overbroad and needs to be overturned,'' he said.

Schmitt indicated that the biggest challenge for the USPTO’s attorney was where the line should be drawn on what constitutes a “scandalous” mark, given the inconsistency with which the statute has been applied.

Although the Supreme Court is likely to overturn the ban on scandalous marks, Schmitt said, it is likely to use its ruling to try and “articulate the length to which Congress can go to prevent distasteful marks from being registered”.

“For example, there was what appeared to be a consensus, which was conceded by respondent’s counsel, that obscene marks should not be subject to registration,'' Schmitt said.

Michael Kelber, co-chair of  Neal, Gerber & Eisenberg’s IP practice group in Chicago, told WIPR that it was “hard to see” how the Supreme Court could uphold the ban.

He cited the court’s previous ruling in Matal v Tam, which struck down the ban on “disparaging” trademarks as unconstitutional.

Kelber said it was unlikely that the court would depart from that ruling in Iancu v Brunetti.

“Given the diversity of viewpoints on what trademarks are “scandalous or immoral,” it’s difficult to argue that such a ban is viewpoint neutral, and therefore permissible under the constitution,” he said.

Ted Davis, partner at  Kilpatrick Townsend & Stockton in Atalanta, told WIPR that he was surprised at the extent to which several justices considered Matal v Tam of “limited relevance to the case currently before it”.

Davis noted that Justice Stephen Breyer “aggressively questioned Brunetti’s counsel on why the government cannot deny registration to racially charged marks”, but failed to raise similar concerns in Matal v Tam.

Other justices also expressed concern “that a ruling in Brunetti’s favour might require public transit systems to accept advertising prominently featuring his mark and others like it”, Davis said.

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More on this story

15 April 2019   The US Supreme Court will today, April 15, hear arguments over whether it should permit the registration of “scandalous” or profane trademarks, a move which critics say would be unconstitutional.
24 June 2019   The US Supreme Court overturned the prohibition on registering scandalous trademarks earlier today, June 20.
25 June 2019   Lawyers have welcomed the US Supreme Court’s decision to overturn the ban on scandalous and disparaging marks, after the court found yesterday, June 24, that it violated the First Amendment of the US Constitution.