10 September 2018Trademarks

USPTO asks Supreme Court to review ‘scandalous’ trademarks case

The US Patent and Trademark Office (USPTO) has asked the Supreme Court to review a ruling that opened the door to registration of “scandalous and immoral” trademarks.

The USPTO filed a writ of certiorari on Friday, September 7, asking whether the legal provisions that prohibit the federal registration of  “scandalous and immoral” trademarks are facially invalid under the Free Speech Clause of the First Amendment.

Under section 2(a) of the Lanham Act, trademarks that consist of immoral or scandalous matter may be refused registration.

However, in December last year, the US Court of Appeals for the Federal Circuit ruled that the act’s ban on such trademarks is an unconstitutional restriction of free speech.

As part of the ruling, the Federal Circuit overturned a decision made by the Trademark Trial and Appeal Board (TTAB) which refused a trademark registration for the mark ‘Fuct’.

In 2011, Erik Brunetti applied to register the mark, but a USPTO examining attorney denied the registration under section 2(a) of the Lanham Act.

The TTAB “observed that respondent used the mark in connection with apparel and promotional material displaying ‘strong, and often explicit, sexual imagery that objectifies women and offers degrading examples of extreme misogyny’”, the USPTO said in its filing on Friday.

According to the USPTO, the Federal Circuit’s ruling that the ban on registering scandalous marks is unconstitutional is incorrect and warrants a review.

The USPTO argued that the provisions in section 2(a) do not prohibit any speech, forbid any conduct or restrict the use of any trademark, nor do they restrict the trademark owner’s protection.

“Rather, it simply directs the USPTO to refuse, on a viewpoint-neutral basis, to provide the benefits of federal registration to scandalous marks,” said the USPTO.

The office added that under the proper analysis, the First Amendment does not prohibit US Congress from banning the registration of “vulgar terms and graphic sexual images”.

In its petition for writ of certiorari, the USPTO said that the scandalous-marks provision reflects Congress’s view that the US government should not promote the use of graphic sexual images and vulgar terms by granting them registration.

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USPTO asks Supreme Court to review ‘scandalous’ trademarks case

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More on this story

18 December 2017   The US Court of Appeals for the Federal Circuit ruled that the Lanham Act’s ban on “scandalous and immoral” trademarks is unconstitutional, in a decision handed down late last week.
7 January 2019   The US Supreme Court is to review a law which blocks the registration of “scandalous” and “immoral” trademarks.
24 June 2019   The US Supreme Court overturned the prohibition on registering scandalous trademarks earlier today, June 20.