Do trademark restrictions violate freedom of speech?

The United States Patent and Trademark Office (“USPTO”) has filed a writ of certiorari at the United States Supreme Court seeking to reinstate a federal prohibition on the registration of “scandalous” trademarks.

The issue stems from section 2(a) of the Lanham Act, which states that a trademark may be refused registration if it “[c]onsists of or comprises immoral, deceptive or scandalous matter”. The US Court of Appeals for the Federal Circuit found the provision to be unconstitutional, as the bar on registering immoral or scandalous marks is a restriction of free speech.

The case flows from a finding made by a USPTO examining attorney, who refused to register a mark under section 2(a) of the Lanham Act on the basis that it comprised immoral and scandalous matter. The USPTO examining attorney’s refusal to register the mark was affirmed by the United States Trademark Trial and Appeal Board. That decision was then appealed to the US Court of Appeals for the Federal Circuit.

The USPTO’s writ of certiorari asks the United States Supreme Court to assess whether the prohibition on the federal registration of “immoral” or “scandalous” marks is facially invalid under the Free Speech Clause of the First Amendment. If the Supreme Court grants the writ, this does not necessarily mean that the Court disagrees with the appellate decision. However, it does mean that at least four justices have determined that the petition is sufficient to warrant review by the Supreme Court.

Author: Steve Inglis