Iancu v. Brunetti, No. 18-302 (U.S. June 24, 2019)
On June 24, 2019, the U.S. Supreme Court struck down the Lanham Act’s provisions barring registration of “immoral” or “scandalous” trademarks. In a 7-3 decision written by Justice Kagan, the Court ruled that the restrictions were view-point based, and thus were unconstitutional under the First Amendment. This decision follows the recent Supreme Court decision in Matal v. Tam, 582 U. S. ___ (2017) that struck down the Lanham Act’s prohibition against registration of “disparaging” marks, further broadening of the types of marks that are eligible for registration under the Act.
The putative registrant, Brunetti, filed an application for registration of the mark, “F-U-C-T” in the U.S. Patent and Trademark Office. The trademark examining attorney and the Trademark Trial and Appeal Board both rejected the registration citing 15 U. S. C. §1052(a), which bars the registration of “immoral  or scandalous” marks. Brunetti argued that his mark is pronounced by saying each letter individually. The Trademark Office ruled that the common perception of the mark is that it is one word, and as such it was “immoral” and “scandalous.” To determine whether a mark fits in this category, the Office 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.” Slip op. at 3 (citation omitted). On appeal, the Federal Circuit reversed, reasoning that the prohibition was unconstitutional for the reasons set forth in Tam.
The Court ruled that, as in the recent Tam decision involving disparaging marks, the immoral and scandalous prohibitions in the Lanham Act were unconstitutional. The Court began by determining whether the restriction was viewpoint-based. The Court ruled that in Tam, the Court “found common ground in a core postulate of free speech law: The government may not discriminate against speech based on the ideas or opinions it conveys.” Slip op. at 4. As result, the constitutionality question generally boils down to one issue – whether the restriction is viewpoint-based or viewpoint-neutral. In this case the Court found that there was little question that the restriction was viewpoint-based.
So the Lanham Act allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety. Put the pair of overlapping terms together and the statute, on its face, 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. The statute favors the former, and disfavors the latter. “Love rules”? “Always be good”? Registration follows. “Hate rules”? “Always be cruel”? Not according to the Lanham Act’s “immoral or scandalous” bar. The facial viewpoint bias in the law results in viewpoint-discriminatory application
Slip op. at 6. The Court illustrated the nature of the viewpoint-based decision making with examples of marks that were rejected as immoral or scandalous, when marks presenting an alternative message were allowed to be registered. Because it is viewpoint-based, the restriction in unconstitutional. “And once the ‘immoral or scandalous’ bar is interpreted fairly, it must be invalidated. The Government just barely argues otherwise.” Slip op. at 10.
The Court majority rejected arguments that the “scandalous” restriction could be interpreted to cover to mode of communicating the trademark, rather than the substance of the mark’s message.
So even assuming the Government’s reading would eliminate First Amendment problems, we may adopt it only if we can see it in the statutory language. And we cannot. The “immoral or scandalous” bar stretches far beyond the Government’s proposed construction. The statute as written does not draw the line at lewd, sexually explicit, or profane marks. Nor does it refer only to marks whose “mode of expression,” independent of viewpoint, is particularly offensive.
It covers the universe of immoral or scandalous—or (to use some PTO synonyms) offensive or disreputable—material. Whether or not lewd or profane.
Slip op. at 9.
The Brunetti decision was generally expected in light of the Court’s decision in Tam. It reduces the grounds that the Trademark Office may use to reject applications for registration of “edgy” marks.
As in the aftermath of Tam, the immediate result will likely be an uptick in trademark applications for provocative and profane marks. However, it is unlikely we, as consumers, will be forced to endure never-ending profanity. Trademarks identify the source of products in commerce and rely on consumer goodwill for strength and market share. Thus, a large, successful company is unlikely to adopt trademarks that will offend or upset most of its customers. Also, the remaining requirements for registration remain in full effect. For example, while an entity can own an offensive trademark, the Trademark Office will not protect a trademark used for illegal products or services. Small markets do exist for legal products and services featuring “immoral” or “scandalous” trademarks. This decision, like Tam, provides more leeway for businesses catering to these small markets to select—and protect—provocative trademarks.