Matal v. Tam

78 Analyses of this case by attorneys

  1. Trademark Law Update: Federal Circuit Strikes Down Lanham Act’s Ban on “Immoral” or “Scandalous” Marks

    K&L Gates LLPJoanna A. DiakosJanuary 11, 2018

    Stay tuned for future updates. Notes 1. 137 S. Ct. 1744 (2017). 2. 15 U.S.C. § 1052(a).

  2. Supreme Court Holds a Portion of Section 2(a) of the Lanham Act Unconstitutional

    Kilpatrick Townsend & Stockton LLPTheodore Davis Jr.June 22, 2017

    Indeed, the government has conceded as much in a pre-Tam letter brief submitted to the Federal Circuit in another case.29 Otherwise, though, the effects of the primary opinions in the case on the federal trademark registration systemoverall likely will be minimal. Although Sections 2, 13, and 14 of the Lanham Act identify myriad grounds on which a mark can be found unregistrable, most other than Section 2(a)’s prohibitions on potentially disparaging matter, on the one hand, and immoral and scandalous matter, on the other, are viewpoint neutral.30 The odds of the outcome in Tam resulting in the invalidation of other grounds for unregistrability therefore are low.1 No. 15-1293, 2017 WL 2621315 (U.S. June 19, 2017).2 15 U.S.C. § 1052(a) (2012).3 The first was United States v. Steffens (The Trademark Cases), 100 U.S. 82 (1979).4 447 U.S. 557 (1980).5 Justice Gorsuch did not participate.6 15 U.S.C. § 1052(a) (2012).7 See, e.g.,Doughboy Indus. v. Reese Chem.

  3. Scandalous and Immoral Trademarks Awarded First Amendment Protection

    Bracewell LLPErin HennessyJanuary 3, 2018

    This decision follows the Supreme Court’s recent decision in Matal v. Tam, in which the Court unanimously held that the prohibition on registration of disparaging trademarks violated the First Amendment. See 137 S. Ct. 1744 (June 19, 2017).The Scandalous and Immoral Marks Provision The scandalous and immoral marks provision (“Scandalous-Marks Provision”), §2(a) of the Lanham Act, prohibited registration of a trademark that “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.”

  4. The FUCT Mark: Is the Prohibition on Scandalous Marks Unconstitutional?

    Mintz - Trademark & Copyright ViewpointsSusan Neuberger WellerMarch 15, 2019

    The constitutionality of yet another portion of Section 2(a) of the Lanham Act will soon be determined. Following in the footsteps of the blockbuster decision in Matal v. Tam, 137 S. Ct. 1744 (2017) (“Tam”), the U.S. Supreme Court granted certiorari to Iancu v. Brunetti on January 4, 2019. In Matal v. Tam, the Supreme Court held that the prohibition in Section 2(a) of the Lanham Act against registering disparaging trademarks at the U.S. Trademark Office (“USPTO”) was an unconstitutional restriction on free speech.

  5. The FUCT Mark: Is the Prohibition on Scandalous Marks Unconstitutional?

    Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.Susan Neuberger WellerMarch 14, 2019

    The constitutionality of yet another portion of Section 2(a) of the Lanham Act will soon be determined. Following in the footsteps of the blockbuster decision in Matal v. Tam, 137 S. Ct. 1744 (2017) (“Tam”), the U.S. Supreme Court granted certiorari to Iancu v. Brunetti on January 4, 2019. In Matal v. Tam, the Supreme Court held that the prohibition in Section 2(a) of the Lanham Act against registering disparaging trademarks at the U.S. Trademark Office (“USPTO”) was an unconstitutional restriction on free speech.

  6. How Big a Deal Is “Trump Too Small”? – SCOTUS Today

    Epstein Becker & GreenJune 19, 2023

    ply saying that the applicant cannot say it with an ® designation and that the applicant cannot prevent others of like mind from saying it based on a federal registration. While a registration of a such mark might make saying the phrase more financially lucrative, denial of a federal registration is not the equivalent of taxing speech, at least according to the Government.The second issue that the Government raised relates to its assertion that the case presents a question that was left open in prior cases before the Supreme Court as to whether a Lanham Act bar on the registration of a trademark is a condition on a government benefit or a simple restriction on speech. (Id. at p. 11). Given the succinct nature of the Court’s statement of the issue presented, the extent to which, if at all, the Court will deal with this nuance is unclear. But the potential for its clear resolution is signaled by the fact that this issue was left open in two previous cases before the Court, Matal v. Tam, 137 S. Ct. 1744 (2017) andIancu v. Brunetti, 139 S. Ct. 2294 (2019). In Tam, the Court granted review of a Federal Circuit decision that had invalidated the Lanham Act’s bar on the registration of “disparag[ing]” marks. 15 U.S.C. 1052(a); seeTam, 137 S. Ct. at 1755. And in Brunetti, the Court granted review of a Federal Circuit decision that had invalidated the Lanham Act’s bar on the registration of “immoral” or “scandalous” marks. 15 U.S.C. 1052(a); seeBrunetti, 139 S. Ct. at 2298.Elster’s Brief in Opposition to Petition for Writ of Certiorari (the “Opposition Brief”), not surprisingly, argued the opposite: that the Court should deny the petition because this narrow, as-applied challenge satisfies none of the Court’s traditional criteria for certiorari under Supreme Court Rule 10. (Opposition Brief at p. 2). Elster likewise argued that this is not a case in which the Court should determine the overall constitutionality of Section 1052(c), because the CAFC did not invalidate the statute itself, rather it i

  7. The Supreme Court - September 30, 2021

    Dorsey & Whitney LLPTimothy DroskeOctober 1, 2021

    a jurisdictional requirement or a claim-processing rule subject to equitable tolling.Shurtleff v. City of Boston, No. 20-1158: This case involving the City of Boston’s refusal to allow a Christian civic organization to raise its flag on City Hall Flag Poles designated as “public forums” raises three issues: 1) Whether the First Circuit’s failure to apply this Court’s forum doctrine to this First Amendment challenge conflicts with this Court’s precedents holding that speech restrictions based on religious viewpoint or content violate the First Amendment or are otherwise subject to strict scrutiny and that the Establishment Clause is not a defense to censorship of private speech in a public forum open to all comers. 2) Whether the First Circuit’s classifying as government speech the brief display of a private religious organization’s flag on a city flagpole in these circumstances unconstitutionally expands the government speech doctrine, in direct conflict with this Court’s decisions in Matal v. Tam, 137 S. Ct. 1744 (2017), Walker v. Texas Div., Sons of Confederate Veterans, Inc., 576 U.S. 200 (2015), and Pleasant Grove City v. Summum, 555 U.S. 460 (2009). 3) Whether the First Circuit’s finding that the requirement for perfunctory city approval of a proposed brief display of a private religious organization’s flag on a city flagpole transforms the religious organization’s private speech into government speech, conflicts with this Court’s precedent in Matal v. Tam, 137 S. Ct. 1744 (2017), and Circuit Court precedents from the Second, Eighth, and Ninth Circuits.Concepcion v. United States, No. 20-1650: Whether, when deciding if it should “impose a reduced sentence” on an individual under Section 404(b) of the First Step Act of 2018, 21 U.S.C. §841 note, a district court must or may consider intervening legal and factual developments.

  8. Supreme Court Holds Ban on Immoral or Scandalous Trademarks Unconstitutional

    Akerman LLP - Marks, Works & SecretsIra SacksJuly 1, 2019

    On June 24, 2019, the United States Supreme Court, in Iancu v. Brunetti, reviewing the trademark application for “FUCT”, held that the Lanham’s Act’s provision, prohibiting the registration of “immoral[] or scandalous” trademarks, 15 U.S.C. 1052(a)(1), violated the First Amendment to the United States Constitution. This blog has followed the evolving judicial views concerning “disparaging” trademarks, culminating in the Supreme Court’s decision in Matal v. Tam, 137 S. Ct 1744 (June 19,2017) (our coverage can be found here) and the related issue of “immoral or scandalous” trademarks as last addressed by the Federal Circuit in In re Brunetti, 877 F.3d 1330 (Fed. Cir. 2017)(here), and as to which the United States Supreme Court granted certiorari.Respondent Erik Brunetti founded a clothing line that uses the trademark “FUCT.”

  9. Protected or Unprotected: The Supreme Court Hears Iancu v. Brunetti

    BakerHostetlerMarch 19, 2019

    The issues now before the Court are whether (1) the statutory prohibition against registration of a “immoral” or “scandalous” marks is facially invalid; and (2) the statute as applied to the registration of “immoral” or “scandalous” marks is constitutionally vague under the First and Fifth Amendments. The Supreme Court, in Matal v. Tam, 137 S. Ct. 1744, 198 L. Ed. 2d 366 (2017), held that the particular language in Section 2(a) refusing registration of a trademark on grounds that the mark may “disparage or … bring them into contempt or disrepute” was facially invalid under the First Amendment as viewpoint discrimination. Tam was a plurality opinion, which is subject to the narrowest of interpretations.

  10. The Slants, The Redskins, and Free Speech for All Parties

    Winthrop & Weinstine, P.A.Jessica Gutierrez AlmJune 24, 2017

    The Supreme Court’s decision that “the disparagement clause violates the Free Speech Clause of the First Amendment,” thus removing The Slants’ block to registration, was a well-received public victory. Matal v. Tam, No. 15-1293, 2017 WL 2621315, at *20 (U.S. June 19, 2017). However, as many have since pointed out, this decision was a win not only for The Slants, but for anyone seeking federal registration of an otherwise disparaging mark.