USPTO Files Petition for Writ of Certiorari in Brunetti "FUCT" Case

On September 7, 2018, the USPTO filed at the Supreme Court a Petition for a Writ of Certiorari (pdf here) in Iancu v. Brunetti, seeking the Court's review of the judgment of the U.S. Court of Appeals for the Federal Circuit in In re Brunetti, 125 USPQ2d 1072 (Fed. Cir. 2017) [TTABlogged here]. The CAFC ruled in Brunetti that the Section 2(a) bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech. The CAFC therefore reversed the decision of the TTAB that had affirmed the USPTO's refusal to register the mark FUCT for athletic apparel on the ground that the mark is vulgar and therefore scandalous.

In its petition, the Government poses the following question:

QUESTION PRESENTED
Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), provides in pertinent part that a trademark shall be refused registration if it “[c]onsists of or comprises immoral * * * or scandalous matter.” The question presented is as follows:

Whether Section 1052(a)’s prohibition on the federal registration of “immoral” or “scandalous” marks is facially invalid under the Free Speech Clause of the First Amendment.

The Government argues that Matal v. Tam is not controlling because the bar on scandalous marks is not viewpoint discriminatory. Rather, restrictions on profanity and sexual images are viewpoint neutral. Neither of the lead opinions in Matal v. Tam concluded that strict scrutiny applies to viewpoint-neutral limitations on the registrability of trademarks.

The Government contends that Section 2(a)'s ban on registration of scandalous marks does not abridge the right to freedom of speech because it does not restrict the terms or images that may be used as trademarks. The CAFC therefore erred in treating the ban as an affirmative restriction on speech.

The court also erred, says the Government, in deeming the government-subsidy decisions inapplicable, in failing to recognize that the trademark-registration scheme operates only in the commercial sphere, and in dismissing the Government's legitimate justifications for denying the benefits of registration to sexually explicit content.

Registration of a trademark does not signal government endorsement of any particular product, service, mark, name, or registrant. But the government’s registration of a scandalous term as a trademark, which results in publication of that mark on the Principal Register and allows the registrant to use the mark with the ® symbol, would convey to the public that the United States regards scandalous images and terms as appropriate source identifiers in commerce. Congress could also reasonably conclude that commercial actors are more likely to choose marks for which the advantages of federal registration are available, and it could reasonably decline to provide this incentive to the use of sexual imagery and other scandalous marks. Those government interests are fully sufficient to justify Section 1052(a)’s exclusion of such marks from the federal trademark-registration program.

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TTABlog comment: I wonder how Supreme Court nominee Kavanaugh feels about Brunetti's mark?

Text Copyright John L. Welch 2018.