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Ban on ‘Scandalous’ Trademarks Held Unconstitutional by Federal Circuit

December 15, 2017

As anticipated, today the Federal Circuit Court of Appeals ruled the USPTO’s ban on registering “scandalous and immoral” trademarks Unconstitutional, in light of this year’s landmark Supreme Court decision, which similarly struck down the ban on “disparaging” trademark registrations.  In its decision, the appeals court overturned a ruling by the USPTO, refusing to register the word mark “FUCT”, holding the government’s prohibition of registering profane, sexual or objectionable marks violates the First Amendment.

 

 

The case, In re Brunetti, No. 2015-1109 (Fed. Cir. 2014), involved an attempted trademark registration for a clothing line by Erik Brunetti for the mark “Fuct”.  “The trademark at issue is vulgar,” wrote U.S. Circuit Judge Kimberly A. Moore in the opinion.  “The First Amendment, however, protects private expression, even private expression which is offensive to a substantial composite of the general public.”

 

The government’s mandated bans on registering “scandalous”, “immoral” and/or “disparaging” trademarks were all derived from the same statute, Section 2(a) of the Lanham Act.  As such, the Brunetti case had been paused while the Supreme Court’s decision on the constitutionality of Section 2(a) of the Lanham Act, regarding disparaging marks, was decided over the summer in Matal v. Tam, 582 U.S. __(2017).  Given the high court’s ruling in that case, holding a government ban on disparaging trademarks is unconstitutional, many experts believed the ban on “scandalous and immoral” subject matter could not survive the new precedent.

 

Given this decision, pending trademark applications which have been placed into suspension, after having received a Section 2(a) “scandalous” or “immoral” refusal, should now proceed through examination to registration – just in time for the holidays.  Bad Santa, eat your heart out.

 

If you have a trademark, slogan or logo you wish to protect, call the offices of Reyes & Schroeder Associates, P.C., at 818-253-1641, or e-mail us at info@rslawca.com or info@trademark.legal.  We are highly experienced in trademark prosecution services and obtaining successful registrations at the USPTO for our clients.  Our qualified attorneys will insure you receive the highest quality legal counsel, necessary to secure protection of your marks across the entire United States.  You may read the full opinion of the Federal Circuit’s decision in In re Brunetti here:  http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1109.Opinion.12-13-2017.1.PDF

 

About the Author:  Michael W. Schroeder is a licensed attorney in good standing in the State of California with extensive experience in trademark prosecution, litigation and transactional legal services.   www.Trademark.Legal

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