St. Louis attorney Bryan Wheelock spoke to Steven Seidenberg at Intellectual Property Watch about the biggest cases to watch in 2019. Among the cases is Iancu v. Brunetti, which will go before the U.S. Supreme Court later this year.
The question at hand is whether the ban on “immoral” or “scandalous” trademarks violates the First Amendment. The Court previously struck down the ban on “disparaging” marks in Matal v. Tam, in which the Asian-American rock band was fighting to protect their band name The Slants.
The ruling over disparaging trademarks will have no controlling influence over immoral and scandalous marks, although many expect that the close relationship between the issues will lead to a similar ruling. “I expect the Supreme Court will hold that if you have a First Amendment right that protects disparaging marks, you have a similar right that protects vulgar marks as well,” said Wheelock.
Seidenberg further notes that the U.S. trademark system will be an exception to the international norm if it lifts the ban on these vulgar marks. “The majority of jurisdictions forbid the registration of any marks, including vulgar marks, that are ‘contrary to morality or public order,’” he said.
If the Supreme Court fails to find a substantial difference between disparaging and immoral marks, then Brunetti’s mark for his fashion line FUCT is likely to be granted.
Perhaps the underlying issue for the Supreme Court will be if the Lanham Act, which is the basis of U.S. trademark law and contains the descriptions of “scandalous” and “immoral” marks, needs drastic updating.
Many business owners and attorneys already hold that it does.