On June 24, 2019, the U.S. Supreme Court issued its highly anticipated opinion in Iancu v. Brunetti, holding that the Lanham Act’s prohibition on the registration of “immoral” or “scandalous” trademarks violates the First Amendment.
In 1990, Erik Brunetti, an artist and entrepreneur, founded the streetwear clothing line, FUCT (pronounced as four letters, one after the other: F-U-C-T). Brunetti attempted to register the FUCT trademark in order to protect its value. The U.S. Patent and Trademark Office (PTO) denied his application for registration, concluding that because it was phonetically equivalent to the “past participle” of “a well-known” vulgarity, registering the FUCT trademark would violate Section 1052(a) of the Lanham Act, which prohibits trademark protection for immoral, shocking, offensive, and scandalous marks. After exhausting his remedies in the PTO, Brunetti brought a First Amendment challenge to Section 1052(a) in the Court of Appeals for the Federal Circuit. That court invalidated the “immoral or scandalous” clause. In a 6-3 opinion, the Supreme Court affirmed the Federal Circuit’s decision, holding that the prohibition of immoral or scandalous trademarks infringes the First Amendment because it disfavors certain ideas. The Court’s majority opinion, joined by both liberal and conservative justices, made clear that the government cannot discriminate against “ideas that offend.”
The Brunetti opinion comes on the heels of the Court’s 2017 decision in Matal v. Tam, in which the Court invalidated neighboring language in Section 1052(a) which bars the registration of marks that “disparage any person, living or dead.” In both Tam and Brunetti, the Court determined that Section 1052(a) of the Lanham Act permits the PTO to discriminate on the basis of viewpoint in violation of the First Amendment. Together, the Court’s rulings in Tam and Brunetti mean that, absent the passage of new legislation, the PTO will no longer have a statutory basis to refuse federal registration of any trademark for being potentially vulgar, profane, offensive, disparaging, or obscene.
The Lanham Act and Its Origins
As the Court recounted in Matal v. Tam, “[t]rademarks and their precursors have ancient origins” and were “protected at common law and in equity at the time of the founding of our country.” For most of the nineteenth century, trademarks were protected under state laws. The first trademark lawsuits arose in the United States in the 1840s. In 1870, as trademark law developed and became a more international issue, Congress created the first federal statutory trademark law, which was revised in 1876 to add criminal penalties for trademark infringement. Soon after, however, constitutional issues arose regarding Congress’s power to create trademark law, and in 1879, the Supreme Court found the entire federal statutory trademark system unconstitutional. The confusion following this decision prompted ultimately unsuccessful efforts for a constitutional amendment, leading to the exclusively international trademark law of 1881. Congress then revisited the subject and passed the trademark law of 1905.
Today, the registry of federal trademarks is governed by the Lanham Act, enacted in 1946, codified at 15 U.S.C. §§ 1051, et seq. The common law, however, survives today, permitting, among other benefits, trademark infringement suits even in circumstances where a trademark application was not filed with the PTO. Though registration with the PTO is not required for a trademark to be protected, it confers a number of benefits on the registering party, including giving the party the right to use the mark nationwide and to bring an infringement suit in federal court. Moreover, after five years, registered trademarks can become “incontestable,” at which point the exclusive right to use the mark is conclusively established.
The Lanham Act grants the PTO administrative authority over trademark registration. Several provisions of the Lanham Act permit the PTO to reject trademarks from the principal register based on certain criteria. At issue in both the Tam and Brunetti cases were the prohibitions under Section 1052(a) of the Lanham Act, which permit the rejection of trademarks that “[consist] of or [comprise] immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”
Matal v. Tam
Two years before the Court’s decision in Brunetti, on June 19, 2017, the Court in Matal v. Tam invalidated the Lanham Act’s bar on the registration of trademarks that may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead.” Although the Court was split in some respects, it agreed that the provision violated the First Amendment because it discriminated on the basis of viewpoint.
Simon Tam is the lead singer of the rock group The Slants. Tam contends that he chose this name for his band to “reclaim” the term and “drain its denigrating force as a derogatory term for Asian persons.” When Tam tried to register “THE SLANTS,” however, the PTO denied his application based on the Lanham Act’s prohibition of the registration of “disparaging” marks, determining that “there is . . . a substantial composite of persons who find the term in the applied-for mark offensive.” The PTO also relied on a finding that “the band’s name has been found offensive numerous times—citing a performance that was canceled because of the band’s moniker and the fact that several bloggers and commenters to articles on the band have indicated that they find the term offensive.” Tam unsuccessfully contested the denial of registration through the administrative appeals process and then took the case to federal court. On appeal, an en banc Federal Circuit Court found the Lanham Act’s disparagement clause facially unconstitutional under the First Amendment’s Free Speech Clause.
In an opinion written by Justice Alito, the Supreme Court affirmed the Federal Circuit’s finding that the disparagement clause was unconstitutional. The Court determined that the disparagement clause denies registration to any mark that is offensive to a substantial percentage of the members of any group, and that constitutes viewpoint discrimination because “[s]peech may not be banned on the ground that it expresses ideas that offend.”
With the Lanham Act’s disparagement clause invalidated, the viability of the Lanham Act’s neighboring prohibition of “immoral” or “scandalous” trademarks hung in the balance, pending the Court’s review of Brunetti’s case.
Iancu v. Brunetti
In denying Brunetti’s registration application, the PTO determined that the mark was “vulgar” and “therefore unregistrable.” On review, the PTO’s Trademark Trial and Appeal Board (the “Board”) found that the FUCT mark was “highly offensive” and that it had “decidedly negative sexual connotations.” The Board concluded that FUCT communicated “misogyny, depravity, [and] violence,” and, therefore, there was no question that FUCT is “extremely offensive” and that rejection of Brunetti’s application was warranted. Brunetti then brought a facial challenge to the “immoral” or “scandalous” provision of the Lanham Act in the Court of Appeals for the Federal Circuit, which held that the prohibition violated the First Amendment.
Following oral argument on April 15, 2019, the Supreme Court issued its opinion on June 24, 2019. Justice Kagan, writing for the majority, held that the Lanham Act’s prohibition on registration of “immoral” or “scandalous” trademarks violates the First Amendment. Justice Kagan was joined by Justices Ginsburg, Thomas, Alito, Gorsuch, and Kavanaugh. Chief Justice Roberts and Associate Justices Breyer and Sotomayor dissented, in part.
The Court framed its analysis around whether the Lanham Act’s “immoral” or “scandalous” clause was viewpoint-neutral or viewpoint-based. If it was viewpoint-based, meaning the bar discriminates on the basis of viewpoint, then the statute violates the First Amendment. The Court concluded that the prohibition of the registration of “immoral” or “scandalous” marks is indeed viewpoint-based. To illustrate that the PTO’s application of the “immoral” or “scandalous” prohibition is not viewpoint-neutral, the Court set forth a number of examples of trademarks registered and rejected by the PTO.
|REGISTERED BY THE PTO||REJECTED BY THE PTO|
|D.A.R.E. TO RESIST DRUGS AND VIOLENCE||YOU CAN’T SPELL HEALTHCARE WITHOUT THC|
|SAY NO TO DRUGS—REALITY IS THE BEST TRIP IN LIFE||MARIJUANA COLA and KO KANE|
|PRAISE THE LORD and JESUS DIED FOR YOU||BONG HITS 4 JESUS|
|WAR ON TERROR MEMORIAL||BABY AL QAEDA and AL-QAEDA|
As the above examples make clear, the “rejected marks express opinions that are, at the least, offensive to many Americans.” The Court found that the prohibition of “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 results in viewpoint-discriminatory application because the “PTO has refused to register marks communicating ‘immoral’ or ‘scandalous’ views about (among other things) drug use, religion, and terrorism, but it has approved registration of marks expressing more accepted views on the same topics.” Based on this analysis, the Court concluded that, like the neighboring disparagement clause invalidated in the Tam case, the “immoral” or “scandalous” clause also discriminates on the basis of viewpoint, in violation of the First Amendment.
In his concurring opinion, Justice Alito agreed that “a law banning speech deemed by government officials to be ‘immoral’ or ‘scandalous’ can easily be exploited for illegitimate ends.” Alito speculated that Congress, however, might be able to draft a more narrow prohibition, writing that the Court’s “decision does not prevent Congress from adopting a more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas.”
Brunetti Partial Dissents Propose Narrowed Construction of “Scandalous”
All nine justices agreed that that the term “immoral” runs afoul of the First Amendment, and is “not susceptible of a narrowing construction that would eliminate its viewpoint bias.” In their partial dissents, however, Justices Roberts, Breyer, and Sotomayor wrote that the prohibition of “scandalous” trademarks should stand because it “can be given a narrowing construction” to “cover only marks that offend because of their mode of expression.”
Justice Sotomayor’s partial dissent began with the dire prediction that the “Court’s decision today will beget unfortunate results.” Sotomayor wrote that, as result of the Court’s opinion, “Government will have no statutory basis to refuse (and thus no choice but to begin) registering marks containing the most vulgar, profane, or obscene words and images imaginable.” Indeed, Sotomayor’s partial dissent predicts a “coming rush to register” similar profane, vulgar, and offensive trademarks. To avoid this, Sotomayor proposed a narrowed construction of the bar on the registration of “scandalous” marks, limiting its application to obscene, vulgar, and profane marks. Sotomayor urged that her constrained interpretation would “allow the PTO to restrict (and potentially promulgate guidance to clarify) the small group of lewd words or ‘swear’ words that cause a visceral reaction, that are not commonly used around children, and that are prohibited in comparable settings.” This, Sotomayor argues, “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.”
It remains to be seen how Congress will react to the Brunetti decision, and whether it will attempt to pass new legislation to limit the registration of vulgar, obscene, and profane trademarks, as Justice Alito proposes. Whether Congress attempts to legislate in this area may depend, at least in part, on whether (now that these provisions of the Lanham Act have been invalidated) commerce is flooded by a sea of trademarks registering “the most vulgar, profane, or obscene words and images imaginable,” as foretold by Justice Sotomayor.
It is unclear, however, whether the scope of any such prohibition, no matter how constrained, could ever pass constitutional muster. The Court’s majority in Brunetti is doubtful. By definition, the category of “scandalous” marks includes “marks that offend by the ideas they convey,” and, therefore, any such prohibition of “scandalous” marks will always discriminate “based on viewpoint,” in violation of the First Amendment.