Scandalous TM Case May Not Follow Tam, as Many Predicted

Arguments continue in Iancu v Brunetti as the Supreme Court considers the Lanham Act's block on registering "immoral" or "scandalous" marks. Many were surprised to see the Supreme Court take on the case, as it closely followed the decision by the Court on Matal v Tam, which found the “disparaging” provision to be unconstitutional.

The justices took pains to avoid any vulgar or scandalous language during the arguments in a way that they didn’t in Tam, commented DC-based partner at Finnegan Mark Sommers. In response to a point regarding the mark 'P-H-U-C', Justice Gorsuch said “I don't want to go through the examples. I really don't want to do that,” and the courtroom laughed.

Sommers says that this “indicates that we as a society have not bridged the comfort zone of public tolerance of such words, whether entitled to federal registration as trademarks or otherwise. That the same degree of reverence was not paid to the racially charged words used during the Tam argument suggests that scandalous marks will not be treated as a mere carbon-copy follow-on to the holdings for disparaging marks.”

Brunetti appealed a decision by the Trademark Trial and Appeal Board affirming the examining attorney’s refusal to register the mark “FUCT.” Experts say that affirming the Federal Circuit’s finding of unconstitutionality will have minimal impact, as the marketplace often plays the largest role. If individuals are offended, they will not buy the product.