And down goes another Lanham Act clause…

By: Meghan Nugent

The Federal Circuit just ruled that the “scandalous” clause of the Lanham Act is unconstitutional in view of the Supreme Court decision in Matal v. Tam.

As a refresher, Matal v. Tam involved the Asian-American rock band The Slants, who filed an application for a trademark to register their band name, The Slants, with the United States Patent and Trademark Office (USPTO). The office rejected the band’s application. Relying on the disparagement clause of the Lanham Act, the USPTO found the name “The Slants” was offensive toward Asian-Americans. The Supreme Court eventually heard the case and determined that the disparagement clause “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

Now, in the case In re: Brunetti the Federal Circuit determined that the scandalous clause of the Lanham Act that bars trademarks that are either scandalous or immoral is unconstitutional as well. The applicant, Erik Brunetti, sought to register the mark “Fuct” for apparel. The USPTO denied registration citing the scandalous nature of the mark. On appeal the Federal Circuit noted that “[t]he trademark at issue is vulgar.” Yet despite the vulgarity of the mark, the First Amendment “protects private expression, even private expression which is offensive to a substantial composite of the general public.” The Court further noted that the USPTO failed to offer a substantial government interest for policing offensive speech.

This decision marks the latest seismic shift in “trademarkability,” but one that many experts saw coming after the Matal decision.

The Brunetti and Matal decisions open the door for registration of a lot of trademarks that were previously deemed unregisterable under the Lanham Act. These decisions suggest that there is no such thing as a disparaging or scandalous mark and that the USPTO will no longer be the arbiter of good taste. Effectively, nothing is off limits when it comes to non-traditional brand identifiers.

However, just because a mark can be registered doesn’t mean that it should. Businesses still look to their customer base and the market place to determine whether an edgy mark that was once considered disparaging or scandalous is a wise business decision. What’s true for The Slants and Fuct might not be true for every business.