In Iancu v. Brunetti, the United States Patent and Trademark Office (USPTO) is appealing to the Supreme Court to rule that the Lanham Act's prohibition on "immoral" or "scandalous" marks violates the First Amendment's free speech clause.

At issue in this case is Erik Brunetti's FUCT trademark for clothing, which was refused in 2011 because it was considered a scandalous term under the Lanham Act.

According to reports of the Supreme Court's hearing on April 15, 2019, the justices' line of questioning indicated they are likely to follow their own lead in Matal v. Tam, a previous case which struck down the disparagement clause of the Lanham Act, by likewise striking down the restriction on federal registration of trademarks that are "immoral or scandalous" on First Amendment grounds.

Speaking to IPWatchdog, William Thomashower, Counsel in Pryor Cashman's Intellectual Property Group, opined, "there seemed to be unanimity that the statute itself was broad, or even overbroad, in prohibiting 'immoral,' 'deceptive,' or 'scandalous' words from the benefits of registration. This is, after all, a 1946 statute, repeating two of the words from the original 1905 Act." 

Thomashower added, "several of the justices seemed more willing to consider the statute constitutional to refuse registration of a limited number of words and their equivalents that would be deemed by the public at large as 'vulgar,' or 'profane' or falling within the Court's long-ago definition of 'obscenity.' So, the concern was if the government can't deny a registration benefit to the whole broader category of words under the statute, what does that do to the precedents that say the government can refuse profanity or obscenity in other contexts, like paid advertising on a city bus? And won't there be a mad scramble to be the first to register all the core profanity, and get exclusivity? The statute being more broadly written than profanity and obscenity, Justice Gorsuch finally asked near the end, 'Where is the line here?'" 

Click here to read the full article in IPWatchdog

More About Thomashower's Practice 

With more than 40 years of experience litigating complex IP cases, William Thomashower represents clients in state and federal courts, before arbitration panels and in matters before the U.S. Patent and Trademark Office. He counsels global brands, consumer goods companies, luxury goods manufacturers, and digital media and entertainment companies on all aspects of trademark law, including selection, prosecution, policing and litigation. 

Learn more about his work here.

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