On April 15, 2019, the U.S. Supreme Court will hear oral arguments in the high-profile Andrei Iancu v Erik Brunetti trademark case. Specifically, the Court will examine whether banning trademark registrations for "immoral" and "scandalous" marks violates the Free Speech Clause of the First Amendment.
Speaking to Intellectual Property Magazine, Dyan Finguerra-DuCharme, a partner in Pryor Cashman's Trademark practice opined, "The First Amendment should trump any government interest in allowing not only disparaging marks, but also purported 'immoral' or 'scandalous' marks to register." "If a consumer is offended by the product name," she added, "then they don't have to buy it, but it shouldn't be up to the government to determine that a mark is so 'scandalous' that it is undeserving of a trademark registration."
Brunetti comes before the Supreme Court after Erik Brunetti sought federal registration for the mark 'FUCT' in connection with a clothing line he started in 1990. The US Patent and Trademark Office (USPTO) refused registration under the Lanham Act, on grounds that the mark would be perceived as equivalent to the vulgar word for which it is a homonym. This decision was later affirmed by the USPTO's Trademark Trial and Appeal Board.
In December 2017, the Court of Appeals for the Federal Circuit held that the Lanham Act's ban on the registration of immoral or scandalous trademarks, which has guided federal registration decisions for 113 years, is unconstitutional under the First Amendment.
In response, the USPTO argued that the Federal Circuit's ruling was incorrect and warranted Supreme Court review.
Brunetti follows the widely-publicized Matal v Tam dispute, where a court held in June 2017 that the same section of the Lanham Act used to prohibit the federal registration of "disparaging" trademarks violates the First Amendment.
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More About Finguerra-DuCharme's Practice
Dyan Finguerra-DuCharme is recognized as a "Leading Trademark Lawyer" by World Trademark Review, and is the winner of Lexology and International Law Office's Client Choice Award in Intellectual Property: Trademarks. She manages large-scale trademark vigilance programs, prosecutes trademarks on a global basis and provides opinions on the availability of trademarks in the U.S.
Learn more about her work and experience here.
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