In re Brunetti: Showing the Effects of Matal v. Tam - Fordham Intellectual Property, Media & Entertainment Law Journal
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In re Brunetti: Showing the Effects of Matal v. Tam

In re Brunetti: Showing the Effects of Matal v. Tam

The 1946 Lanham Act governs the federal registration of trademarks.1 For over 70 years, Section 2(a) of the Lanham Act barred the federal registration of “disparaging,” “scandalous,” and “immoral” marks.2 In recent years, however, this Section has come under attack.3

In 2017, in the seminal case Matal v. Tam, the Supreme Court unanimously held the disparagement clause of the Lanham Act to be an unconstitutional restriction on speech.4 There was a question, however, regarding whether courts would extend this analysis to the “scandalous” and “immoral” clauses of Section 2(a).5 The December 2017 decision in the case In re Brunetti, answered this question.6

In 2011, Erik Brunetti, a clothing designer, filed an intent-to-use application for the mark ‘FUCT’ to be used in connection with his clothing brand.7 The United States Patent and Trademark Office refused registration, citing Section 2(a) of the Lanham Act and claiming that the mark was “immoral” or “scandalous.”8 On appeal, the Trademark Trial and Appeal Board upheld this decision.9 Brunetti then appealed to the Federal Circuit.10

In 2017, after requesting additional briefing from the recent Matal v. Tam case, the Federal Circuit reversed the Trademark Trial and Appeal Board’s decision.11 The Court admitted that the mark “FUCT” is vulgar and therefore would be considered “scandalous” and “immoral” under Section 2(a) of the Lanham Act.12 However, it held that Section 2(a)’s bar on filing “scandalous” or “immoral” marks is unconstitutional under the First Amendment, as an “improper content-based restriction on free speech.”13 Thus, the Court found that Brunetti should be able to federally register the mark “FUCT.”14

In re Brunetti was the “first major decision analyzing Lanham Act Section 2(a)” in the wake of Matal v. Tam.15 It shows that the Supreme Court’s finding regarding the disparagement clause of Section 2(a) does in fact extend to the “scandalous” and “immoral” clauses of the same Section.16

In re Brunetti is predicted to have “significant ramifications for those seeking federal protection for edgy or offensive marks.”17 Many trademarks that were previously refused may now be appropriate for registration.18 Thus, the United States Patent and Trademark Office will likely see an increase in trademark registrations.19 In re Brunetti shows the far-reaching effects that the Supreme Court’s decision in Matal v. Tam will have on the trademark world.

  1. See Louis S. Ederer, et al., Supreme Court Strikes Down 70-Year-Old Statutory Provision Barring the Registration of “Disparaging” Trademarks, Arnold & Porter (June 21, 2017), [].

  2. Id.

  3. See, e.g., id.

  4. See id.

  5. See id.

  6. 877 F.3d 1330 (Fed. Cir. 2017).

  7. In re Brunetti: Toppling the Bar on Bad Words, Brinks Gilson & Lione (Dec. 21, 2017), [].

  8. Id.

  9. Id.

  10. Id.

  11. See id.

  12. See id.

  13. Id.

  14. Id.

  15. David A. Bell, et al., New Law: Federal Circuit Finds Ban On Scandalous/Immoral Trademarks Unconstitutional, HaynesBoone (Jan. 3, 2018), [].

  16. See id.

  17. Id.

  18. See id.

  19. See id.

Alexandra Lane

Alexandra Lane is a second year law student at Fordham University School of Law and a staff member of the Intellectual Property, Media, & Entertainment Law Journal. She spends her free time listening to trademarked Taylor Swift music.