Two years ago, the Supreme Court issued an important trademark decision that concerned the intersection of the Free Speech Clause of the First Amendment to The Constitution and the “disparagement clause” within the Lanham Act. See Matal v. Tam, 582 U.S. ___ , 137 S. Ct. 1744, 198 L. Ed. 2d 366 (June 19, 2017). The Free Speech Clause of the First Amendment provides that “Congress shall make no law … abridging the freedom of speech.” The “disparagement clause” of the Lanham Act was intended to prevent the registration of trademarks that disparage racial or ethnic groups.
The Supreme Court held that the “disparagement clause” violated the First Amendment because trademarks are not government speech, a form of government subsidy or subject to a newly asserted “government-program” doctrine.
I wrote about that decision on January 25, 2018. In that blog post, I noted that:
“The case is also the basis for a recent decision by the United States Court of Appeals for the Federal Circuit that invalidated another similar provision in the Lanham Act directed to immoral or scandalous marks. See In re Brunetti, __ F.3d ___ (Fed. Cir. December 15, 2017)(slip op.). The Brunetti court held that the Lanham Act’s bar against immoral or scandalous marks is unconstitutional because it violates the First Amendment using similar reasoning as the Supreme Court used in the Matal decision.”
The Supreme Court reviewed the Brunetti decision on June 24, 2019. The Court upheld the Federal Circuit’s decision because the Lanham Act’s ban on “immoral or scandalous marks” is not viewpoint neutral and is overbroad. The Court reasoned:
“The ‘immoral or scandalous’ bar is substantially overbroad. There are a great many immoral and scandalous ideas in the world (even more than there are swearwords), and the Lanham Act covers them all. It therefore violates the First Amendment.”
Iancu v. Brunetti, 588 U.S. ___ (2019).