PTO Admits to More Free Speech Issues in Trademark Act

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By Peter Leung

Jan. 26 — The Federal Circuit's finding that the Lanham Act's prohibition on registering disparaging marks is unconstitutional also dooms the ban on scandalous and immoral marks, the Patent and Trademark Office admitted on Jan. 21.

The PTO said that, though a court could well-distinguish between the ban on disparaging marks and the bar against scandalous and immoral marks, the breadth of the U.S. Court of Appeals for the Federal Circuit's en banc ruling in In re Tam essentially made it impossible to do so. (246 PTD, 12/23/15)

The PTO made this admission in a letter brief filed in another Federal Circuit case, In re Brunetti. The applicant there is appealing the rejection of his mark “fuct,” which the PTO found violated the prohibition on scandalous or immoral marks contained in Section 2(a) of the Lanham Act. The ban on disparaging marks is found in the same section, as well as other prohibitions such as on marks using certain geographical indicators.

The PTO's brief relates to one of the biggest questions following the Tam decision, which involved an Asian American band attempting to register its own name, the Slants. While the Federal Circuit said that opinion was limited to the bar against disparaging marks, some lawyers suggested that it called into question other provisions in Section 2 as well.

“What the majority seems to be saying is that, to withstand strict scrutiny, a prohibition has to be to protect investment or to prevent consumer confusion,” Professor Christine Fahey of American University told Bloomberg BNA when the Tam decision was released. “So much of Section 2 will fall victim if this is the analysis.”

Unnecessarily Broad

In its brief, the PTO suggested that, had the Federal Circuit decided Tam on narrower grounds, the disparagement and scandalous provisions could be treated differently. For example, while the court found that the disparagement provision was viewpoint discrimination because it only blocked registrations of marks perceived by the referenced group as negative—and not those perceived as positive—this reasoning does not necessarily apply to the bar on scandalous or immoral marks.

Similarly, it suggested that the government's interest in denying the registration of sexually explicit marks is different from its interest in blocking disparaging marks, a potentially important point because the constitutionality of laws restricting free speech may turn, in part, on the government interest advanced by the restriction.

Not Over Yet

While admitting that the Federal Circuit's ruling in Tam left no grounds to differentiate the bar on scandalous and immoral marks from the struck-down prohibition on disparaging marks, the PTO noted that it reserved the right to seek Supreme Court review. In such a case, the PTO suggested that it may not only defend the constitutionality of both provisions but argue that they should be treated differently.

To contact the reporter on this story: Peter Leung in Washington at pleung@bna.com

To contact the editor responsible for this story: Mike Wilczek in Washington at mwilczek@bna.com

For More Information 
Text of the PTO's Brunetti brief is available at: http://src.bna.com/cd6.