Trademark Registration Of A Dirty Word: Is The Supreme Court Game?

On April 15, 2019, the Supreme Court will hear oral argument in In re Brunetti, No. 18-302. The case presents a question at the crossroads between trademark registration and free speech: Section 2(a) of the Lanham Act currently bans the registration of a trademark that consists of or comprises "immoral" or "scandalous" matter. The court will determine whether or not this ban violates the First Amendment. A three-judge panel of the Federal Circuit provided an emphatic "yes" to that question in December 2017, when it concluded that the ban on registering immoral/scandalous trademarks impermissibly discriminates based on content in violation of the First Amendment. See In re Brunetti, 877 F.3d 1330 (Fed. Cir. 2017).

For those who may have déjà vu on the brain, don't be alarmed. Just short of two years ago, in Matal v. Tam, 137 S. Ct. 1744 (2017), the Supreme Court found that a sister provision of Section 2(a)—which bans the registration of trademarks that might "disparage" any persons, living or dead—was unconstitutional under the First Amendment, in a case involving the mark "Slants" for a musical rock band, which the US Patent and Trademark Office (the PTO) had refused to register on the basis that it disparaged Asian-Americans. The disparagement and scandalous/immoral bans are two of several bases included in the Lanham Act upon which the PTO previously could rely to refuse the registration of a mark. Whether the PTO can continue to cite the latter is now an open question to be decided by the justices.

The Supreme Court's decision to hear Brunetti raises some important questions. Namely, why has the court agreed to take another close look at Section 2(a) after reviewing a similar provision twenty-two months earlier? One hint may be to look to the current make-up of the court. Tam featured a splintered plurality opinion, where the eight participating justices only subscribed to the basic principle that the disparagement ban violated the First Amendment. The many concurring opinions demonstrate that the justices could not find much more in the way of common ground, including, for example, whether the ban constituted a restriction on speech subject to strict scrutiny or a lower level of constitutional scrutiny.

Might the justices have taken up Brunetti to issue a more definitive pronouncement on this issue? Justice Kennedy, who wrote a concurring opinion in Tam, has since retired. And, of course, what about the addition of Justices Gorsuch and Kavanaugh, who did not hear Tam? Below, we provide an overview of the Federal Circuit's decision in...