It has not been two years since the Supreme Court issued its opinion in the case of Matal v. Tam – a case touching upon an issue near and dear to all of us – free speech.  That case involved the situation in which, Simon Tam, the lead singer of the group, The Slants, sought to register the band’s name with the United States Patent and Trademark Office. The trademark office refused the registration on the basis that the word “slants” was disparaging.

Tam’s case went through the USPTO and the Court of Appeals before being accepted by the Supreme Court.  In a significant ruling, the Supreme Court announced that the language of trademark law, 15 U.S.C. §1052(a), that barred registration of trademarks that may “disparage . . . or bring. . . into contemp[t] or disrepute” any “persons, living or dead” violated  the First Amendment’s Free Speech Clause because the standard for registration amounted to discrimination based upon viewpoint.  I wrote posts about the case here and here.  In that, the Supreme Court does not everyday adjudge statutes unconstitutional, the Tam case was extraordinarily significant in the context of both trademark law and constitutional law.

The Supreme Court is not done analyzing §1052(a).  It just took another case, Iancu v. Brunetti, that will involve balancing the interests of the First Amendment against the government’s authority to deny registrations to marks deemed vulgar.  Specifically, the Court will decide if the language of §1052(a) that prohibits registration of “immoral” or “scandalous” marks is facially invalid under the Free Speech Clause of the First Amendment.

In this latest case, Erik Brunetti wants to register the word “FUCT” for use with apparel and promotional material.  According to the reports on the case, Brunetti founded the clothing line in 1990 and has been using the mark since then.  Given that the word is an obvious variant spelling of a street term for past-tense coitus, the trademark office barred registration of the word on the grounds that it was immoral or scandalous under §1052(a).  Brunetti appealed to the Court of Appeals for the Federal Circuit and it ruled, following Matal v. Tam, that the statute’s bar on registering immoral or scandalous marks was an unconstitutional restriction on free speech.

Now the Supreme Court will have its say and I think that is a good thing for purposes of providing clarity.  In this respect, I noted in my first blog with respect to the ban on disparaging marks that the trademark office’s history of determining what marks were disparaging was highly inconsistent.  The trademark office’s rulings with respect to “immoral” or “scandalous” marks have been equally inconsistent.  Sometimes it lets you register a dirty word (i.e., overt or colloquial references to sexual or excretory matter), other times not.  (To get an idea how inconsistent the trademark office has been, find Brunetti’s Supreme Court respondent’s brief on the web and read the discussion on what has been refused and what has been allowed. For companies that like working edgy or “blue” with their brands this uncertainty and inconsistency is highly unwelcome.  From my standpoint, the uncertainty is needless.  If the market finds your brand immoral – it will tell you.