In re Brunetti

2 min

On December 15, 2017, a three-judge panel of the Court of Appeals for the Federal Circuit held that although the mark “FUCT” comprises immoral or scandalous matter, it is still federally registrable because Lanham Act Section 2(a)’s bar on registering such marks is an unconstitutional restriction of free speech, thereby violating the First Amendment. This decision is similar to the Supreme Court’s recent decision in Matal v. Tam, 137 S. Ct. 1744 (2017), which held that Section 2(a)’s bar on the registration of disparaging marks was likewise an unconstitutional restriction of free speech. Within only a few months, the scandalous, immoral and disparaging mark bars have been chipped out of Section 2(a) of the Lanham Act.

The Federal Circuit rejected the government’s argument that the immoral or scandalous mark bar was valid because trademark registration is either a “government subsidy program” or a “limited public forum,” which permits the government to limit speech. In turn, the Federal Circuit found this bar did not survive strict or intermediate scrutiny, and was thus unconstitutional.

In a concurring opinion, Judge Dyk argued that the immoral and scandalous bar could be saved by limiting its scope to bar only obscene marks. The majority (Judges Moore and Stoll) rejected this limitation as unreasonable: “There is no dispute that an obscene mark would be scandalous or immoral; however, not all scandalous or immoral marks are obscene….We cannot stand in the shoes of the legislature and rewrite a statute.”