This article seeks to create an early empirical benchmark on registrations of marks that would have failed registration as “scandalous” or “immoral” under Lanham Act Section 2(a) before the Court of Appeals for the Federal Circuit’s In re Brunetti decision of December 2017 and to briefly examine the possible outcome of the Supreme Court’s grant of certiorari on that case. The Brunetti decision followed closely behind the Supreme Court’s Matal v. Tam and put an end to examiners denying registration on the basis of Section 2(a). In Tam, the Supreme Court reasoned that Section 2(a) embodied restrictions on free speech, in the case of “disparaging” marks, which were clearly unconstitutional. The Federal circuit followed that same logic and labeled those same Section 2(a) restrictions as unconstitutional in the case of “scandalous” and “immoral” marks. Before the ink was dry in Brunetti, commentators wondered how lifting the Section 2(a) restrictions would affect the volume of registrations of marks previously made unregistrable by that same section. Predictions ran the gamut from “business as usual” to scenarios where those marks would proliferate to astronomical levels. A little more than a year out from Brunetti, it is hard to say with certainty what could happen, but this study has gathered the number of registrations as of March of 2019 and the early signs seem to indicate a future not much altered, despite early concerns to the contrary. In January 2019 the Supreme Court agreed to review the Federal Circuit’s decision and that review will lead to clarification on whether scandalous and immoral marks are also protected by the First Amendment. Shortly before publication of this article, on June 24th, 2019, the Supreme Court decided the Brunetti case. In essence, the Court upheld the Federal Circuit’s decision maintaining the unconstitutionality of Section 2(a) restrictions on registration of “scandalous” and “immoral” marks. A short postscript analyzing the Supreme Court’s decision concludes this article.
Vicenc Feliu, The F Word - An Early Empirical Study of Trademark Registration of Scandalous and Immoral Marks in the Aftermath of the In re Brunetti Decision, 18 J. Marshall Rev. Intell. Prop. L. 404 (2019)