Supreme Court to Consider Immoral/Scandalous Marks

Monday, February 11, 2019

On January 4, 2019, the U.S. Supreme Court granted the U.S. Patent & Trademark Office’s (USPTO) petition for writ of certiorari to decide whether the USPTO’s denial of a federal trademark registration under 15 U.S.C. § 1052(a) on the ground that the mark contains “ immoral” or “scandalous” matter violates the right to freedom of speed under the First Amendment of the Constitution.   Iancu v. Brunetti, No. 18-302, 2019 WL 98541 (2019).  The appeal involves an application for federal registration of the mark FUCT in connection with a clothing line.  The USPTO refused registration on the ground that the mark is a homonym of a vulgar word.  The grant of certiorari comes on the heels of the Supreme Court’s 2017 decision, Matal v. Tam, 137 S.Ct. 1744 (2017) (“Tam”), in which the Court unanimously held that the disparagement provision of the same statute, Section 1052(a), was facially invalid under the First Amendment.  In its petition, the USPTO attempted to distinguish Tam by arguing, inter alia, that Tam was decided, in part, on the ground that the disparagement provision discriminated based on viewpoint, whereas a “significant body of precedent [has held] that restrictions on the use of profanity and sexual images [i.e., immoral and scandalous matter] are viewpoint neutral.”  The USPTO also pointed out that, should the Court invalidate the scandalous-marks provision of Section 1052(a), the USPTO will not be able to invoke the provision to refuse registrations “of even the most vulgar terms and lewd sexual images.” A decision is expected before the Court concludes its Term in June.