The U.S. Supreme Court has agreed to hear arguments in the case of Iancu v. Brunetti. This, as you may recall, is an appeal regarding the constitutionality of the Lanham Trademark Act’s section 2(a) provision precluding registration of “immoral” or “scandalous” trademarks. In the wake of the much-discussed 2017 Supreme Court decision in Matal v. Tam, finding that the “disparaging marks” provision of that same section violates the First Amendment, the U.S. Patent and Trademark Office (USPTO) refused to register the mark FUCT for various articles of clothing.

The Tam case focused only on marks that “disparage” persons or groups or “bring them into contempt or disrepute.” The Brunetti application was refused based on the “immoral” and “scandalous” language of section 2(a). Like Simon Tam had done before him, Erik Brunetti appealed his refusal to the Trademark Trial and Appeal Board and thence to the Court of Appeals for the Federal Circuit (CAFC). The CAFC, as it had done in the Tam case, found the refusal inconsistent with the First Amendment, and the U.S. government asked the Supreme Court to hear the case. Last week, the Court agreed to do so.

The government contends that the Tam decision applies to trademarks that express a viewpoint, whereas the Brunetti refusal appears to have been based solely on content, regardless of viewpoint, and that this difference is sufficient for the Court to separately hear the Brunetti case. Brunetti maintains that inconsistent past grants and refusals of registration to immoral or scandalous marks show that the USPTO has indeed decided these matters based on perceived viewpoint and not solely on content, and Section 2(a)’s “immoral” and “scandalous” language thus offends the First Amendment in the same way the Court has already found unconstitutional in Tam.

The issue in the case is framed as “Whether Section 2(a) of the Lanham Act’s prohibition on the federal registration of ‘immoral’ or ‘scandalous’ marks is facially invalid under the free speech clause of the First Amendment.” It seems hard to imagine that the Court, having found viewpoint-based discrimination unconstitutional, would find content-based discrimination permissible. On the other hand, all trademarks consist of “content” of some kind, and the USPTO is arguably making a content-based decision when it finds a trademark unregistrable because it is generic or merely descriptive or confusingly similar to a prior-registered mark. So the Court will have to take a very narrow look at “content-based” refusals, considering both content and context, if it is to reach a decision that is consistent with both the First Amendment and the consumer-protection mission of trademark law.