In a follow-up article published by IPWatchdog, Bass, Berry & Sims attorney Brian Iverson provided insight on the government’s arguments in its cert petition with the Supreme Court in Iancu v. Brunetti, a case that questions the immoral and scandalous clause of Section 2(a) of the Lanham Act. This clause permits the U.S. Patent and Trademark Office (USPTO) to refuse registration of a trademark that is considered immoral or scandalous. This case comes in the wake of the Supreme Court’s decision in Matal v. Tam, which struck down the disparagement clause of the Lanham Act as unconstitutional viewpoint discrimination. Brian analyzed the impact of the Matal case in a previous IPWatchdog article, “Matal v. Tam: What’s New and What to Watch in Registration of Disparaging, Immoral, and Scandalous Trademarks.”

In December 2017, a Federal Circuit panel held in Brunetti that the immoral and scandalous clause is unconstitutional in violation of the First Amendment’s free speech clause, relying in large part on the Supreme Court’s decision in Tam. In its cert petition with the Supreme Court filed on September 7, 2018, the government asserts:

  • That Tam is not controlling in Brunetti because Tam was decided on viewpoint grounds, while a ban on immoral or scandalous marks is viewpoint-neutral
  • Key questions were left unanswered following the Tam decision, including whether trademark registration qualifies as a “government subsidy” or as “commercial speech”
  • Section 2(a) does not restrict speech because inability to register a mark does not prevent the owner from using the mark
  • If the Federal Circuit’s decision is allowed to stand, there would be likely not be any further dispute or judicial resolution on the constitutionality of the scandalous marks provision

“Many companies have generated significant brand attention and driven overall brand value by pushing the envelope. If the U.S. Supreme Court agrees to hear the Brunetti case, it could have a substantial impact on ‘shock value’ marks in commerce,” said Brian.

The latest article, “Supreme Court Asked to Consider Immoral or Scandalous Trademarks,” was published by IPWatchdog on October 11, 2018, and is available online.