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June 25, 2019In the News

Schmitt quoted in World Trademark Review article "Iancu v Brunetti ruling – trademark community has its say on implications of momentous US Supreme Court decision"

World Trademark Review

Michael Best Partner Marshall Schmitt was quoted in World Trademark Review article "Iancu v Brunetti ruling – trademark community has its say on implications of momentous US Supreme Court decision"

The US Supreme Court has handed down its ruling in Iancu v Brunetti, holding that the Lanham Act’s prohibition on the registration of “immoral” or “scandalous” trademarks violates the First Amendment. WTR reached out to a number of leading trademark experts to explore the possible implications of the decision, for applicants, the US Patent and Trademark Office (USPTO) and the future of the trademark ecosystem.

“Highlights that the First Amendment remains a robust and vibrant force in our democracy”

Marshall Schmitt is a member of Michael Best’s IP practice group:

The Supreme Court’s decision today in Iancu v Brunetti, rejecting that the ban on registration of “immoral or scandalous” trademarks, is the rare case where the oral argument for the most part foreshadowed the outcome. During the oral argument, it was clear that the justices were struggling to grapple with drawing a line on marks that everyone acknowledged were offensive.

The majority opinion and multiple concurring and dissenting opinions are the product of that struggle. Writing for the majority, Justice Kagan articulates unequivocally that the statue is unconstitutional on its face and that the government’s invitation to salvage the statute through a narrowing interpretation would be tantamount to rewriting the statute. She resists the temptation to opine on what alternative statute would pass constitutional muster and inserts a telling footnote to that effect, which prompts Justice Alito to provide guidance as to what he believes Congress needs to do to comply with the First Amendment. Another interesting facet of the majority opinion is how Justice Kagan uses actual examples of marks granted and denied registration to bolster the finding that, on its face, the statute is unconstitutional. Such analyses are usually limited to “as applied” challenges. Justice Breyer adopts Justice Sotomayor’s detailed linguistic analysis of the phrase “immoral or scandalous,” but also attempts to articulate a doctrinal approach as to why the rationale for the First Amendment leads to the same result. As he indicated in the oral argument he might, Chief Justice Roberts finds at bottom that banning registration of marks like the one at issue do not offend the First Amendment because no one is being punished and the government is not obligated to facilitate speech only to not abridge it.

Several times throughout the review of the case, various parties observed that, whether a mark is registered or not, it can be used in commerce. The multiple decisions are a fascinating study in how the justices understand the First Amendment is to be interpreted and applied in our society and how traditional conservative and liberal labels frequently lose meaning with such constitutional issues. Most important, the decision and the opinions highlight that the First Amendment remains a robust and vibrant force in our democracy worthy of respect by all who sit on the Court no matter how they decide any particular case.”

To read the entire article, click here.

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