USPTO Concedes Federal Circuit’s In re Tam Ruling Also Invalidates Lanham Act’s Scandalous and Immoral Ban

The reverberations of last month’s Federal Circuit decision in In re Tam, which ruled the Lanham Act’s Section 2(a) ban on the registration of “disparaging” trademarks  unconstitutional, are beginning to be felt.  In In re Brunetti, the TTAB had refused the applicant’s trademark application for FUCT as scandalous and immoral, which applicant then appealed to the Federal Circuit. On January 21, 2016, the USPTO conceded in a letter brief that the Federal Circuit’s reasoning in Tam also requires invalidation of the Lanham Act’s  prohibition on the registration of scandalous and immoral marks. Although the USPTO was clear that it believes Tam was wrongly decided, it acknowledged that the Court’s opinion in Tam effectively foreclosed any constitutional distinctions that could be made between the two parts of Section 2(a). Accordingly, the USPTO recommended that the case be remanded to the Board for further proceedings.

The USPTO further noted that it is considering whether to seek review of Tam at the Supreme Court, where it may argue, among other things, that “under reasoning less sweeping than that adopted in Tam, the bar on registration of scandalous and immoral marks would survive even if the bar on registration of disparaging marks were held invalid (or vice versa).” The USPTO’s letter brief makes clear that, though it has lost at the Federal Circuit, it may not be giving up its Section 2(a) fight.

The case is In re Brunetti, No. 2015-1109.