IP Law Daily Court strikes down Lanham Act’s bar on registration of ‘immoral’ or ‘scandalous’ marks
Monday, June 24, 2019

Court strikes down Lanham Act’s bar on registration of ‘immoral’ or ‘scandalous’ marks

By Thomas Long, J.D.

Like the previously invalidated bar on "disparaging" marks, the "immoral/scandalous" marks prohibition violated the First Amendment as a viewpoint-based restriction on free speech.

The Lanham Act’s prohibition against registration of "immoral" or "scandalous" trademarks violates the First Amendment as a viewpoint-based restriction on expression, the U.S. Supreme Court has held. A divided Court affirmed a decision by the U.S. Court of Appeals for the Federal Circuit, holding that the immoral/scandalous prohibition of Lanham Act Section 2(a), 15 U.S.C. §1052(a), was facially invalid as an unconstitutional abridgement of free expression, and reversing the USPTO’s refusal to register the mark "FUCT" for street clothing. The majority opinion was written by Justice Kagan and joined by Justices Thomas, Ginsburg, Alito, Gorsuch, and Kavanaugh. Justice Alito wrote a concurring opinion. Chief Justice Roberts and Justice Breyer filed opinions concurring in part and dissenting in part. Justice Sotomayor filed an opinion concurring in part and dissenting in part, in which Justice Breyer joined (Iancu v. Brunetti, June 24, 2019, Kagan, E.).

The Trademark Trial and Appeal Board had affirmed a trademark examining attorney’s rejection of artist Erik Brunetti’s application to register the mark FUCT under Section 2(a) on the ground that the mark was the phonetic equivalent of the vulgar term "fucked" and therefore ran afoul of Section 2(a). Section 2(a) states, in relevant part, that a trademark shall be refused registration if it "[c]onsists of or comprises immoral ... or scandalous matter." The USPTO filed a petition for certiorari, asking "Whether Section 1052(a)’s prohibition on the federal registration of ‘immoral’ or ‘scandalous’ marks is facially invalid under the Free Speech Clause of the First Amendment."

In June 2017, the Supreme Court unanimously struck down Section 2(a)’s proscription on registering "disparaging" marks, in the case of Matal v. Tam, 137 S. Ct. 1744. In Tam, the Court held that Section 2(a)’s prohibition against registering marks that "may disparage" persons, institutions, beliefs, or national symbols facially violated the First Amendment’s Free Speech Clause because it amounted to viewpoint-based discrimination. The Court also held that trademarks are private, not government, speech and that the federal trademark registration regime was neither government-subsidized speech, nor subject to regulation under the "government-program" doctrine. The Court expressly limited its holding in Tam to the provision banning registration of disparaging marks, leaving open the question of whether the ban on immoral or scandalous matter is constitutional.

In the instant case, the Court concluded that the immoral/scandalous provision violated the First Amendment for the same reason as the disparagement provision: It disfavored certain ideas. Justice Kagan noted that, to determine whether a mark fits into the "immoral or scandalous" category, the USPTO asked whether a "substantial composite of the general public" would find the mark "shocking to the sense of truth, decency, or propriety"; "giving offense to the conscience or moral feelings"; "calling out for condemnation"; "disgraceful"; "offensive"; "disreputable"; or "vulgar." The USPTO’s examining attorney and the Trademark Trial and Appeal Board had determined that the proposed mark FUCT was unregistrable because it was "vulgar." The Board stated that the term was "highly offensive" and had "decidedly negative sexual connotations." The Board examined evidence of how Brunetti had used the mark and found that his website and products contained images depicting "extreme nihilism" and "antisocial behavior." In the Board’s view, the mark communicated misogyny, depravity, and violence.

The government argued that the ban on registering "immoral or scandalous" marks was viewpoint-neutral, and therefore acceptable under the First Amendment, but the Court disagreed. Justice Kagan pointed to dictionary definitions indicating that "immoral" meant "inconsistent with rectitude, purity, or good morals." Therefore, Justice Kagan reasoned, the Lanham Act permitted registration of marks that "champion society’s sense of rectitude and morality, but not marks that denigrate these concepts." As for the term "scandalous," dictionaries defined it as "giving offense to the conscience or moral feelings," "exciting reprobation," or "calling out condemnation." The provision of Section 2(a) at issue therefore allowed registration of marks with messages that were in accord with society’s sense of decency or propriety, but not marks that defied these concepts. "The facial viewpoint bias in the law results in viewpoint-discriminatory application," Justice Kagan wrote, noting that the USPTO itself had described the prohibition in similar language to the cited dictionary definitions, and listing several examples of rejected marks that had been deemed offensive for such things as "glamorizing drug use" and suggesting irreverence or blasphemy.

The government contended that the statutory bar should be narrowly interpreted to cover only "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 might express." According to the government, this interpretation would primarily restrict the USPTO to refusing "vulgar" marks—that is, marks that were lewd, sexually explicit, or profane. However, the Court could not accept this proposal because it contradicted the unambiguous language of the statute. "The statute does not draw the line at lewd, sexually explicit, or profane marks," Justice Kagan wrote. "Nor does it refer only to marks whose ‘mode of expression,’ independent of viewpoint, is particularly offensive." Rather, it covered the "universe of immoral or scandalous" material. The provision of Section 2(a) therefore violated the First Amendment.

Justice Alito’s concurring opinion. Justice Alito wrote separately, stating that he agreed with the opinion of the Court that the Lanham Act provision at issue violated the First Amendment because it discriminated on the basis of viewpoint and could not be fixed without rewriting the statute. Calling viewpoint discrimination "poison to a free society," Justice Alito wrote, "Our decision is not based on moral relativism but on the recognition that a law banning speech deemed by government officials to be ‘immoral’ or ‘scandalous’ can easily be exploited for illegitimate ends." In Justice Alito’s view, the FUCT mark could be denied under a statute that was more carefully focused to preclude "the registration of marks containing vulgar terms that play no real part in the expression of ideas."

Chief Justice Roberts’ opinion concurring in part and dissenting in part. Chief Justice Roberts agreed with the majority that the "immoral" portion of Section 2(a) was not susceptible of a narrowing construction that would eliminate its viewpoint bias. However, in his view, the "scandalous" portion of Section 2(a) was susceptible to a narrowing construction that would pass constitutional muster. "Standing alone, the term ‘scandalous’ need not be understood to reach marks that offend because of the ideas they convey; it can be read more narrowly to bar only marks that offend because of their mode of expression—marks that are obscene, vulgar, or profane," the Chief Justice opined.

Justice Breyer’s opinion concurring in part and dissenting in part. In Justice Breyer’s view, the key question was "whether the First Amendment permits the Government to rely on this statute, as narrowly construed, to deny the benefits of federal trademark registration to marks like the one at issue here, which involves the use of the term ‘FUCT’ in connection with a clothing line that includes apparel for children and infants." According to Justice Breyer, the answer to this question is "yes." Rather than attempting to construe the Lanham Act in terms of rigid categories of speech, Justice Breyer argued that the analysis should be conducted in terms of proportionality—that is, whether the challenged regulation does harm to First Amendment interests that is disproportionate in light of the relevant regulatory objectives. Under this analysis, the Lanham Act provision at issue did not violate the First Amendment because a bar on registering highly vulgar or obscene trademarks did not do much harm to First Amendment interests. Businesses could still use the "vulgar" terms on their products, as long as they were willing to forgo the benefits of trademark registration, Justice Breyer reasoned. In addition, Justice Breyer argued that the trademark registration system, by its nature, required the government to place restrictions on speech. In contrast, the government had an interest in declining to associate itself with vulgar speech.

Justice Sotomayor’s opinion concurring in part and dissenting in part. Joined by Justice Breyer, Justice Sotomayor concurred with the Court’s opinion as to the unconstitutionality of the term "immoral" in Section 2(a). However, she warned that the Court’s opinion will "beget unfortunate results," leaving the government unable to reject registrations for trademarks "containing the most vulgar, profane, or obscene words and images imaginable." Justice Sotomayor argued that Section 2(a)’s bar on the registration of "scandalous" marks could be construed to address only obscenity, vulgarity, and profanity. "Such a narrowing construction would save that duly enacted legislative text by rendering it a reasonable, viewpoint-neutral restriction on speech that is permissible in the context of a beneficial governmental initiative like the trademark-registration system," Justice Sotomayor wrote. "I would apply that narrowing construction to the term ‘scandalous’ and accordingly reject petitioner Erik Brunetti’s facial challenge."

This case is No. 18-302.

Attorneys: Noel J. Francisco, U.S. Department of Justice, for Andrei Iancu. John R. Sommer (John R. Sommer, Attorney at Law) for Erik Brunetti.

MainStory: TopStory Trademark

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