Supreme Court Invalidates Ban on Immoral or Scandalous Trademarks

In a long-awaited decision, Iancu v. Brunetti, the Supreme Court held – in a 6-3 opinion delivered by Justice Kagan – that the Lanham Act’s prohibition on registration of “immoral or scandalous” trademarks violates the First Amendment.

The decision completes a trilogy of cases that, in recent years, stirred up significant interest on the interplay between freedom of speech and certain Lanham Act trademark prohibitions. Initially, the constitutionality of the bar against registration of disparaging marks was brought to nationwide media attention through the Redskins case (Blackhorse v. Pro-Football, Inc), previously reported on by Gibbons, which culminated the legal effort by Native American tribes to delineate the term “redskin” as an offensive and disparaging racial slur, resulting in the initial cancellation of the eponymous mark owned by the Washington Redskins.

Pending review by the Supreme Court, the Blackhorse case was cut short by another case, Matal v. Tam. In that 2017 decision, the Court struck down a Lanham Act provision that prevented registration for marks that are deemed “disparaging,” thus rendering moot any further review of Blackhorse. Because the Court in Matal had already declared the “disparaging” bar unconstitutional, it comes as no surprise that the Section 2(a) prohibition (15 U.S.C. § 1052(a)) on registration of “immoral or scandalous” matter fared similarly under the scrutiny of the Supreme Court.

In 1990 Erik Brunetti founded a clothing line that uses the trademark FUCT. According to Brunetti, the mark is pronounced as four letters, one after the other: F-U-C-T, and is otherwise an abbreviation of Friends U Can’t Trust. The USPTO examining attorney disagreed, stating that the mark constitutes a phonetic abbreviation of a vulgar word, as such immoral or scandalous within the meaning of Section 2(a) of the Lanham Act. On review, the TTAB concurred, stating that the mark was “highly offensive” and “vulgar,” and that it had “decidedly negative sexual connotations.” The TTAB considered evidence of how Brunetti used the mark. It found that Brunetti’s website and products contained imagery, near the mark, of “extreme nihilism” and “antisocial” behavior. The TTAB thus confirmed the USPTO Examiner’s decision and found the mark unregistrable. Undeterred, Brunetti brought a facial challenge to the Lanham Act’s “immoral or scandalous” bar in the Federal Circuit.

Reversing the TTAB, the Federal Circuit found Section 2(a) to violate the First Amendment. The Supreme Court granted certiorari upon Petition by the USPTO, and affirmed the Federal Circuit decision.

Under Supreme Court law, the government may not discriminate against speech based on the ideas or opinions. If a trademark registration bar is viewpoint based, it is unconstitutional. Thus, if the “immoral or scandalous” bar discriminates on the basis of viewpoint, it is unconstitutional under the First Amendment.

In this sense, the Supreme Court reasoned, the Lanham Act Section 2(a)’s bar is viewpoint based.

Under various dictionary definitions, the majority found that the bar on immoral or scandalous marks “distinguishes between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them; those inducing societal nods of approval and those provoking offense and condemnation.” This “facial viewpoint bias in the law,” according to the majority, “results in viewpoint-discriminatory application.” For example, the Court noted that the PTO rejected the mark YOU CAN’T SPELL HEALTHCARE WITHOUT THC for pain-relief medication, but registered the mark SAY NO TO DRUGS—REALITY IS THE BEST TRIP IN LIFE.

The Supreme Court rejected the Government’s proposal to narrow the statutory bar to “marks that are offensive [or] shocking to a substantial segment of the public because of their mode of expression, independent of any views that they may express.” To adopt the Government’s proposal would not be “to interpret the statute Congress enacted, but to fashion a new one.” The Court thus invalidated Section 2(a) as unconstitutional.

Justices Roberts, Breyer, and Sotomayor each wrote opinions that concurred in part and dissented in part. Chief Justice Roberts argued that the term “scandalous” need not be understood to reach marks that offend because of the ideas they convey, but instead “can be read more narrowly to bar only marks that offend because of their mode of expression—marks that are obscene, vulgar, or profane.” Justices Breyer and Sotomayor similarly dissented because they believe the ban on “scandalous” marks should be interpreted to refer only to certain vulgar or obscene modes of expression.

Following the decisions in Matal, and now in Brunetti, the USPTO can no longer reject trademark applications because they are disparaging, immoral, or scandalous. This is expected to lead to an increase in applications to register marks that are offensive to a substantial segment of the public. It’s important to note that such offensive marks could always, and still can, receive common-law trademark protection if distinctive and used in commerce. The onus is now on Congress to decide whether to enact a narrower prohibition against registration of marks that are obscene, vulgar, or profane.

In the upcoming months, the USPTO will likely remove from suspension hundreds of trademark applications that were waiting further examination pending the outcome in Brunetti.

Paolo A. Strino, a Director in the Gibbons Intellectual Property Department, and Jean E. Dassie, an Associate in the Gibbons Intellectual Property Department, authored this post.
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