Trademark law has grappled with balancing free speech and public morality. The Lanham Act initially banned registering disparaging marks, but this faced criticism for potential viewpoint discrimination and chilling effects on expression.

Two landmark Supreme Court cases, Matal v. Tam and Iancu v. Brunetti, struck down bans on disparaging and immoral marks as unconstitutional. This expanded protectable subject matter but raised concerns about offensive trademarks and balancing competing interests.

Historical and Constitutional Context

Historical treatment of disparaging marks

• Lanham Act of 1946 Section 2(a) prohibited registration of disparaging, immoral, and scandalous marks aimed to protect public morality and avoid government endorsement of offensive content
• Subjective nature of determinations led to inconsistent enforcement over time rejecting marks containing racial slurs (Washington Redskins), profanity (FUCT), and sexually explicit content (Pussy Natural Energy)
• Criticisms arose due to potential viewpoint discrimination and chilling effect on free speech limiting expression in branding and marketing

Constitutionality of registration restrictions

• First Amendment considerations examined government regulation of speech and commercial speech doctrine in trademark context
• Viewpoint discrimination concerns raised due to content-based restrictions on speech subject to strict scrutiny standard
• Government speech doctrine explored implications of treating trademark registration as government speech for First Amendment analysis
• Central Hudson test applied four-part analysis for restrictions on commercial speech: 1) lawful activity and not misleading, 2) substantial government interest, 3) directly advances interest, 4) not more extensive than necessary
• Unconstitutional conditions doctrine questioned linking government benefits to waiver of constitutional rights in trademark registration process

Impact of Matal v. Tam

• Asian-American band "The Slants" sought trademark registration challenging disparagement clause
• Supreme Court unanimously struck down disparagement clause as unconstitutional in 2017
• Key holdings established trademarks as private speech, not government speech, and disparagement clause constituted viewpoint discrimination
• Removal of bar on registering disparaging marks increased protection for potentially offensive marks (DYKES ON BIKES)
• Criticisms raised concerns about potential increase in offensive or hateful trademarks, necessitating balance between free speech and public interest

Implications of Iancu v. Brunetti

• Erik Brunetti attempted to register "FUCT" clothing brand challenging immoral or scandalous provision
• Supreme Court struck down provision as unconstitutional in 2019 finding it discriminated based on viewpoint
• Removal of bar on registering immoral or scandalous marks expanded protectable subject matter in trademark law
• Practical consequences included potential flood of applications for previously prohibited marks (BONG HITS 4 JESUS) and challenges for USPTO in processing new applications
• Future considerations involve potential for narrowly tailored restrictions and balancing trademark protection with other societal interests such as preventing consumer confusion or protecting minors