In Iancu v. Brunetti, the US Supreme Court considered the word “scandalous” as it appears in the Lanham Act, which is the trademark statute in the United States.
The core issue was whether or not Erik Brunetti’s mark “FUCT” was too indecent for trademark protection.
The US Patent and Trademark Office (USPTO) denied the mark on the basis of section 2(a) of the Lanham Act, which prohibits marks that are “immoral, deceptive, or scandalous.” Brunetti appealed to the Trademark Trial and Appeal Board (TTAB), which upheld the USPTO’s decision.
Brunetti then appealed to the Court of Appeals in the District of Columbia.
He argued that an earlier Supreme Court case, Matal v. Tam, established that it was unconstitutional for the USPTO to judge a mark to be “disparaging,” because that would require “viewpoint discrimination” — and viewpoint discrimination by the government was a violation of the first amendment. Brunetti argued that the same rationale applied to the trademark statute’s use of the words “immoral” and “scandalous.”
Justice Kagan wrote the majority opinion upholding the circuit court’s ruling and striking the words “immoral” and “scandalous” from the statute.
Chief Justice Roberts, Justice Sotomayor, and Justice Breier each wrote an opinion dissenting in part. They all agreed that “immoral” should be struck, but found that “scandalous” was much more narrowly construed. Both Sotomayor and Alito predicted that the unintended consequences of this ruling may create public spaces that are repugnant to some people.
Erik Brunetti used a ruling from June of 2017 to prevail in June of 2019. That is why it is so important to choose an attorney who keeps up with the activities of the USPTO, the TTAB, and the federal judiciary. For more information, contact me.