Vulgar is Vogue: Federal Circuit Finds Lanham Act § 2(a)’s “Immoral or Scandalous” Provision Unconstitutional

On December 15, 2017, the Federal Circuit held that Lanham Act § 2(a)’s provision prohibiting the registration of “immoral or scandalous” matter is an unconstitutional violation of the First Amendment.  The Federal Circuit’s decision comes on the heels of the Supreme Court’s decision in In re Tam, which held that another portion of Lanham Act § 2(a), which prohibits the registration of trademarks that may “disparage” persons, institutions, beliefs, or national symbols with the United States Patent and Trademark Office violated the First Amendment.

The Federal Circuit followed the Supreme Court’s reasoning from In re Tam in making its decision (notably, the Tam decision is referenced 48 times in the opinion).  The decision concerned the U.S. Patent and Trademark Office’s refusal to register the term FUCT in connection with clothing.  The Federal Circuit found that even though the term was vulgar and therefore unregistrable under Lanham Act § 2(a), this provision of the Lanham Act was unconstitutional.  In an attempt to distinguish this case from Tam, the government argued that the “immoral or scandalous” provision is “viewpoint neutral” whereas the disparagement clause constitutes “viewpoint discrimination.”  The court sidestepped this issue, noting that regardless of the viewpoint, the provision constituted an unlawful content-based restriction on speech.

The court then went on to reject the same arguments that were previously advanced in Tam.  First, it found that the government could not justify the discrimination under the Spending Clause of the U.S. Constitution, as the registration of trademarks was not a government subsidy program nor is the grant of a trademark registration a subsidy equivalent.  The Federal Circuit then rejected the previously-advanced argument regarding the federal trademark registration program as a limited public forum, noting that because trademarks  are by definition used in commerce, the regulation of a trademark registration program could not be compared to the regulation permissible at a “public school, federal workplace, or any other government property.”  The court went on to analyze the bar on the registration of immoral or scandalous marks from a content restriction perspective, noting that the provision could not survive under either strict scrutiny (expressive speech) or intermediate scrutiny (commercial speech).  Finally, the court discussed how the concept of what is actually immoral or scandalous changes over time, and is also a subjective analysis, which has resulted in inconsistent treatment of like marks (e.g., as of 2011, of the forty marks containing the acronym MILF, twenty marks were refused based on § 2(a), while twenty were not).

Assuming the decision is not appealed or a rehearing is en banc is not granted, Lanham Act § 2(a) will be revised to remove the “immoral or scandalous” language.  The Federal Circuit, perhaps anticipating an upcoming flood of applications for registration of “immoral or scandalous” trademarks, noted that it “find[s] the use of such marks in commerce discomforting, and [is] not eager to see a proliferation of such marks in the marketplace.”  In addition to the potential increase in “immoral or scandalous” trademark applications, some members of the legal community posit that the In re Tam and In re Brunetti decisions could lead to scrutiny of other provisions of the Lanham Act, such as the prohibition against registration of marks that dilute famous marks by tarnishment (Lanham Act § 43(c)).

For more information on the Lanham Act, contact your Intellectual Property Counsel at Smith, Gambrell & Russell.

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