The US Supreme Court has handed down its highly anticipated ruling in Iancu v Brunetti, holding that The Lanham Act’s prohibition on the registration of “immoral [or] scandalous” trademarks violates the First Amendment.
In January, the US Supreme Court agreed to review Iancu v Brunetti, following a USPTO petition for a rehearing en banc in In re: Brunetti, the office contending that a Federal Circuit’s decision on the registrability of the FUCT mark “invalidates a century-old provision of federal trademark law that renders trademarks containing ‘scandalous’ and ‘immoral’ matter ineligible for the benefits of federal registration”. On the other side of the clash was respondent Erik Brunetti, who had brought a first amendment challenge to the “immoral or scandalous” bar in the Federal Circuit, which invalidated the provision.
Specifically, it stated: “In Matal v. Tam… a divided Court agreed on two propositions. First, if a trademark registration bar is viewpoint based, it is unconstitutional. And second, the disparagement bar was viewpoint based. The “immoral or scandalous” bar similarly discriminates on the basis of viewpoint and so collides with this Court’s First Amendment doctrine.”
For now, while today’s decision will not come as a surprise to many in the trademark community, it is certainly notable – effectively invalidating a century-old provision of federal trademark law.