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San Diego Trademarks: Supreme Court Nullifies Ban on “Scandalous” Trademark Registrations

Trade and service marks are some of the most powerful tools that a San Diego business can use to protect and expand its market share. The process of establishing a trade/service mark is essentially one of creation and use. Once in use, the mark can be registered with the US Patent and Trademark Office (“USPTO”) under the provisions of the federal Lanham Act. An experienced San Diego corporate attorney can help with the legal requirements and the registration process.

The Lanham Act was enacted more than 100 years ago and has, for many years, prohibited the USPTO from registering trademarks that could be considered “immoral or scandalous.” When written, the Lanham Act also prohibited the USPTO from registering trademarks that were “disparaging.” However, in 2017, the US Supreme Court struck down that provision as a violation of free speech which is protected by the First Amendment. That case was Matal v. Tam, 137 S. Ct. 1744 (2017) which allowed an all-Asian band to register their name — the “Slants.” It was predicted at that time that the court would look at the other prohibitions in the Lanham Act since, if banning disparaging trademarks was a violation of the First Amendment, then other bans might also be unconstitutional.

As predicted and as expected, on June 24, 2019, the court struck down the provision in the Lanham Act concerning “immoral or scandalous” trade/service marks. See Iancu v. Brunetti, Case No. 18-302 (US Supreme Court, June 24, 2019). The Brunetti case involved Erik Brunetti’s efforts to register the trademark FUCT. According to Brunetti, the mark is pronounced by reading the letters one after the other. But as the Supreme Court stated: “you might read it differently and, if so, you would hardly be alone.” Brunetti founded a clothing line and he uses the trademark on his clothes and the mark functions as the clothing’s brand name.

In striking down the ban on “immoral or scandalous” marks, the Supreme Court reiterated that the First Amendment does not permit Congress — or the States — to ban ideas and concepts without compelling justifications. The court noted that the Lanham Act ban was clearly based on viewpoint and then held that the government provided no compelling justification for the viewpoint discrimination. According to the court, Congress used statutory language that was too broad. “Immoral” and “scandalous” are words that refer to what society believes to be right and proper and upstanding. Allowing only registration of marks that support those pro-society concepts — and not marks that denigrate them — is not viewpoint neutral. The court did leave the door open to the possibility that a more narrow statutory definition — such as a ban on “vulgar” trade/service marks — might survive First Amendment scrutiny, but declined to “re-write” the Lanham Act.

Contact San Diego Corporate Law

For more information, contact Michael Leonard, Esq., of San Diego Corporate Law. Mr. Leonard focuses his practice on business law, transactional, and corporate matters, and he proudly provides legal services to business owners in San Diego and the surrounding communities. Mr. Leonard can be reached at (858) 483-9200 or via email. Like us on Facebook.

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