In re Brunetti: Showing the Effects of Matal v. Tam
The 1946 Lanham Act governs the federal registration of trademarks.[1] For over 70 years, Section 2(a) of the Lanham Act barred the federal registration of “disparaging,” “scandalous,” and “immoral” marks.[2] In recent years, however, this Section has come under attack.[3]
In 2017, in the seminal case Matal v. Tam, the Supreme Court unanimously held the disparagement clause of the Lanham Act to be an unconstitutional restriction on speech.[4] There was a question, however, regarding whether courts would extend this analysis to the “scandalous” and “immoral” clauses of Section 2(a).[5] The December 2017 decision in the case In re Brunetti, answered this question.[6]
In 2011, Erik Brunetti, a clothing designer, filed an intent-to-use application for the mark ‘FUCT’ to be used in connection with his clothing brand.[7] The United States Patent and Trademark Office refused registration, citing Section 2(a) of the Lanham Act and claiming that the mark was “immoral” or “scandalous.”[8] On appeal, the Trademark Trial and Appeal Board upheld this decision.[9] Brunetti then appealed to the Federal Circuit.[10]
In 2017, after requesting additional briefing from the recent Matal v. Tam case, the Federal Circuit reversed the Trademark Trial and Appeal Board’s decision.[11] The Court admitted that the mark “FUCT” is vulgar and therefore would be considered “scandalous” and “immoral” under Section 2(a) of the Lanham Act.[12] However, it held that Section 2(a)’s bar on filing “scandalous” or “immoral” marks is unconstitutional under the First Amendment, as an “improper content-based restriction on free speech.”[13] Thus, the Court found that Brunetti should be able to federally register the mark “FUCT.”[14]
In re Brunetti was the “first major decision analyzing Lanham Act Section 2(a)” in the wake of Matal v. Tam.[15] It shows that the Supreme Court’s finding regarding the disparagement clause of Section 2(a) does in fact extend to the “scandalous” and “immoral” clauses of the same Section.[16]
In re Brunetti is predicted to have “significant ramifications for those seeking federal protection for edgy or offensive marks.”[17] Many trademarks that were previously refused may now be appropriate for registration.[18] Thus, the United States Patent and Trademark Office will likely see an increase in trademark registrations.[19] In re Brunetti shows the far-reaching effects that the Supreme Court’s decision in Matal v. Tam will have on the trademark world.
Footnotes
