Case No. 18-302 | Fed. Cir.
Preview by Boseul (Jenny) Jeong, Online Editor
This case arose out of the U.S. Patent and Trademark Office (“USPTO”)’s decision to refuse Brunetti’s trademark registration based on 15 U.S.C. § 1052(a), which bars the registration of, among other things, immoral and scandalous marks. The Federal Circuit found that the agency’s decision was supported by substantial evidence, but still reversed the decision, ruling that the provision unconstitutionally restricted freedom of speech. The government’s appeal followed.
The case below was preceded by the Court’s decision in Matal v. Tam, 137 S. Ct. 1744 (2017), in which all eight justices who participated agreed that 15 U.S.C. § 1052(a), which bars registration of disparaging remarks, was a violation of the First Amendment. There was a supplemental briefing following Tam and the Federal Circuit ultimately reversed the USPTO’s decision.
Here, Petitioner argues that the Tam decision is only relevant when viewpoint factors in as a basis for decision making. And because barring immoral and scandalous marks is a viewpoint-neutral restriction, the provision is constitutional in this regard. Respondent suggests that Petitioner is changing the interpretation to make a superficial distinction between the two cases.
Petitioner also argues that the restriction on immoral and scandalous marks is not a restriction on speech because (1) it “declines to promote” it, Brief for the Petitioner at 12, Iancu v. Brunetti, No. 18-302 (U.S. filed Feb. 15, 2019) (quoting Ysursa v. Pocatello Educ. Ass’n, 555 U.S. 353, 355 (2009)); and (2) the provision “reflect[s] an offensive ‘mode of expressing whatever idea the speaker wishes to convey’” and is thus viewpoint neutral. Id. (quoting R.A.V. v. City of St. Paul, 505 U.S. 377, 393 (1992)). Additionally, Petitioners argue the application of strict scrutiny would disrupt the registration program whose reference to content is “inherent and inescapable,” and thus Federal Circuit’s application of strict scrutiny is wrong. Id. at 25 (quoting Perry Educ. Ass’n v. Perry Local Educators’ Ass’n, 460 U.S. 37, 49 (1983)).
Respondent, on the other hand, argues the provision regulates offensive speech and is not content neutral. Respondent also argues there is no “mode of expression,” government subsidy, or any other exception that would allow lesser scrutiny to this provision as Petitioner suggested. See Brief for Respondent at 16, 28, Iancu, No. 18-302 (U.S. filed Mar. 18, 2019). Alternatively, even if the provision is not a limitation of speech, the correct standard to apply is strict scrutiny, under which the provision should be invalidated.
Respondent added another argument that the provision is unconstitutionally vague under the First and Fifth Amendments because (1) the Department of Commerce and the Department of Justice use a different interpretation; and (2) the provision is inconsistently applied. Petitioner responded by pointing to USPTO’s limitation on the attorney’s use of subjective views in determining whether registration would violate the scandalous-marks provision, and to the consistency of application through judicial reviews.
Granting registration based on statutory criteria has been a part of the federal trademark system since 1905. Should the Court affirm the decision of the Federal Circuit, it would bring a huge change to a longstanding practice.