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Presented by the Trademark Interest Group.
The speaker will discuss the U.S. Supreme Court’s recent decision in Iancu v. Brunetti, where the Court held that the federal trademark law banning registration of immoral and scandalous marks is a viewpoint-discriminatory regulation of expression that violates the First Amendment. This conclusion was not surprising given the fact that the Court held in 2017 in Matal v. Tam that a similar law denying registration to potentially disparaging marks was an unconstitutional regulation of the viewpoint of expression. While some commentators believe that Tam and Brunetti require the U.S. Patent and Trademark Office to register expression that is hateful, profane, vulgar, or otherwise offensive, trademark applicants still need to prove that their marks are distinctive and function as trademarks that identify a single source of goods or services. Thus, such marks may be refused registration on lack of distinctiveness or failure to function grounds. Moreover, the Justices suggested that Congress could draft a more narrow provision that would survive First Amendment scrutiny, such as a law banning registration of expression that is obscene, vulgar, or profane.
Tam and Brunetti are also important decisions for other reasons. In both of these cases, the Supreme Court clarified that trademark laws regulate the content (and sometimes the viewpoint) of expression and are not immune from careful First Amendment scrutiny. Thus the Justices opened the door to wide-ranging free speech challenges to other U.S. trademark laws. Trademark laws that facilitate the communication of source-identifying product information, promote competition, and protect consumers from misleading uses of marks are probably constitutional under the First Amendment. Yet some trademark laws—such as dilution law—are likely to be found unconstitutional if they are subject to First Amendment analysis, and may need to be eliminated or revised to better protect expressive values and further the goals of trademark law.
Lisa Ramsey is a Professor of Law at the University of San Diego School of Law, where she is a founding member of the Center for Intellectual Property Law and Markets. Professor Ramsey teaches trademark law, and U.S. and international intellectual property classes. Her recent scholarship focuses on non-traditional trademarks and the potential conflict between trademark laws and free speech rights. She has given presentations on trademark law throughout the United States and around the world. Before joining the University of San Diego law faculty, Professor Ramsey was an intellectual property litigator at Gray Cary Ware & Freidenrich.
Moderator: Carole Barrett