Dyan Finguerra-DuCharme, William Thomashower and Kamilah Holder, all members of Pryor Cashman's nationally-recognized Intellectual Property Group, recently co-authored an amicus brief with the New York Intellectual Property Law Association (NYIPLA) arguing that the Lanham Act's bar against the registration of trademarks that are "immoral" or "scandalous" violates the First Amendment's Free Speech Clause. 

Background 

Erik Brunetti, founder of the clothing brand FUCT, filed a trademark application with the U.S. Patent and Trademark Office (USPTO) to register "FUCT" in connection with various types of apparel. 

In January 2013, the USPTO rejected Brunetti's application on grounds that the mark consisted of immoral or scandalous matter. After unsuccessfully appealing to the USPTO and the Trademark Trial and Appeal Board (TTAB), Brunetti appealed to the Court of Appeals for the Federal Circuit. 

The Federal Circuit ruled that while there was evidence to support that the FUCT mark comprised immoral or scandalous matter, Section 2(a) of the Lanham Act's bar on registering such marks impermissibly discriminates based on content, in violation of the First Amendment. The government then appealed the Federal Circuit's decision, bringing the case before the U.S. Supreme Court. 

The Lanham's Acts Unconstitutional Restriction of Speech 

Under Section 2(a) of the Lanham Act, a trademark may be refused registration if it consists of immoral or scandalous matter. In their amicus brief, the authors contend that this provision targets marks for their perceived offensiveness and therefore unconstitutionally restricts speech on the basis of viewpoint. 

Further, Pryor Cashman and NYIPLA argue that, just as the Supreme Court determined in a 2017 case that Section 2(a)'s provision refusing registration of "disparaging" marks was invalid under the First Amendment, it should similarly rule that the prohibition of scandalous or immoral marks unconstitutionally restricts speech.  

The full amicus brief can be read here.

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