On April 15, 2019, the Supreme Court will hear arguments on whether dirty words and vulgar terms may be registrable as trademarks – and if so, what is the test? Section 2(a) of the Trademark Act currently provides that the Trademark Office may refuse registration of a mark that “[c]onsists of or comprises immoral… or scandalous matter.” Erik Brunetti, the owner of the FUCT brand of clothing, filed applications to register his mark. He almost got one registered – it was approved, but the approval by the Trademark Office was withdrawn after the Matal v. Tam decision. The issues now before the Court are whether (1) the statutory prohibition against registration of a “immoral” or “scandalous” marks is facially invalid; and (2) the statute as applied to the registration of “immoral” or “scandalous” marks is constitutionally vague under the First and Fifth Amendments.
The Supreme Court, in Matal v. Tam, 137 S. Ct. 1744, 198 L. Ed. 2d 366 (2017), held that the particular language in Section 2(a) refusing registration of a trademark on grounds that the mark may “disparage or … bring them into contempt or disrepute” was facially invalid under the First Amendment as viewpoint discrimination. Tam was a plurality opinion, which is subject to the narrowest of interpretations. Marks v. United States, 430 U.S. 188 (1977). While all members of the Court held the disparagement clause of Section 2(a) to be facially invalid, the Court was divided over the level of scrutiny generally to be applied to free speech challenges to the Trademark Act. As Justice Kennedy stated in Tam, “We leave open the question whether this is the appropriate framework for analyzing free speech challenges to provisions of the Lanham Act.” 137 S. Ct. at 1768 (Kennedy, J.). No one addressed “immoral” or “scandalous” terms. Continue Reading