In an article published on IPWatchdog, Bass, Berry & Sims attorney Brian Iverson provided insight on the impact and resulting developments in trademark law following the Supreme Court’s ruling in Matal v. Tam last year, a decision that struck down the Lanham Act’s disparagement clause as unconstitutional in violation of the First Amendment’s free speech clause.
Because of the Tam ruling in favor of Asian-American dance-rock band The Slants, several other groups have prevailed in their federal trademark registration disputes (e.g., the Washington Redskins). “However, Tam has not resulted in a substantial surge in disparaging registrations,” Brian noted. “This is unsurprising given that many companies have strong market-based reasons not to use a disparaging mark.”
While the disparagement clause of the Lanham Act was unanimously struck down by the Supreme Court in Tam, a related provision banning “immoral . . . or scandalous matter” continues to make its way through the court system. Many are watching In re Brunetti, a case involving the clothing brand FUCT, which could make its way to the Supreme Court after the Federal Circuit held the “immoral . . . or scandalous” clause unconstitutional last December. Brian notes that the Brunetti decision could have a substantial impact on trademark law and brand protection strategies, because “marks with shock value can bring tremendous attention to a brand.”
In addition to the core question of whether the Lanham Act’s ban on immoral or scandalous trademarks can withstand constitutional scrutiny, Brian notes that Brunetti might provide an avenue for the Supreme Court to address other important questions that went unanswered in the Tam decision. “Many other related issues remain ripe for consideration in Brunetti and future cases. Most significantly, are trademarks considered ‘commercial speech?’ If so, laws relating to trademarks might be subject to relaxed scrutiny for constitutional compliance rather than strict scrutiny.”
Brian includes additional (colorful) trademark examples in the article, “Disparaging, Immoral, and Scandalous Trademarks Since Matal v. Tam,” published by IPWatchdog on August 11, 2018, which is available online.