Ban on Immoral and Scandalous Marks Struck Down

June 28, 2019 Advisory

Those seeking federal registration benefits for their scandalous or immoral trademarks are now in luck. On Monday, the United States Supreme Court held in Iancu v. Brunetti No. 18-302 (U.S. June 24, 2019) that the Lanham Act’s Section 2(a) prohibition against registration of “immoral or scandalous” marks, like Brunetti’s “FUCT” mark, violates the First Amendment. The Court expanded on its discussion in the Matal v. Tam 137 S. Ct. 1744 (June 19, 2017) decision two years prior, which held a similar provision prohibiting disparaging marks unconstitutional for the same reason: viewpoint discrimination.

Historically, as part of its review of a trademark application, the Patent and Trademark Office considered whether a mark was “shocking to the sense of truth, decency, or propriety; offensive or disreputable.” Artist and entrepreneur Erik Brunetti’s application for federal registration of the mark “FUCT” for his clothing line was refused under Section 2(a) of the Lanham Act (“Trademark Act”) after the PTO and Trademark Trial and Appeal Board deemed the mark “highly offensive” and “vulgar.” Brunetti appealed the decision, and facially challenged the “immoral or scandalous” bar in the Court of Appeals for the Federal Circuit. The court found that the statutory provision at issue conflicted with the First Amendment and invalidated the federal statute. The Supreme Court granted certiorari and affirmed the judgment.

Writing for the majority, Justice Kagan explained that by allowing registration of marks that “champion society’s sense of rectitude and morality,” and denying marks that “defy society’s sense of decency and propriety,” the law is facially viewpoint-based. Under the bar, immoral or scandalous views on drug use, religion and terrorism were refused, while marks communicating more accepted views on the same topics gained approval in the form of federal registration. Registration benefits include constructive notice of ownership against infringers, outward evidence of a valid mark, and access to sue in federal court.

The Court rejected the Government’s proposition that the statute be narrowly read to bar marks that are offensive because of their mode of expression, independent of the views they express. The Court’s refusal of the proposed reconfiguration, which would limit the bar to vulgar, sexually explicit and profane marks, rested in its unwillingness to rewrite an unambiguous law to conform it to constitutional requirements. Even if the bar is viewed how the Government insists—as a reasonable condition for a government benefit—the criteria must still be viewpoint neutral, and the Section 2(a) bar it is not.

The Court was sure to provide the Government with guidelines for success. Concurring opinions sent hints to Congress that a statute explicitly barring vulgarity in the mode of expression, rather than the idea expressed could allow for constitutional denials of marks like “FUCT.” Dissenting in part, Justice Sotomayor advocated for a narrow reading of the word “scandalous,” apart from the word “immoral” so that only obscene, vulgar, or profane marks that offend, because of their mode of expression, be prohibited. However, the majority rejected that sort of “statutory surgery” and made clear that a stand-alone “scandalous” bar would still target both ideas and modes of expression and cannot escape viewpoint-based status.

Now that the PTO may no longer deny registration of profane, obscene or immoral marks, it will be interesting to see whether there is an influx of applications for registration of the “great many immoral and scandalous ideas in the world.”

This advisory was co-authored with input from Alundai Benjamin.