SCOTUS Invalidates Lanham Act’s Prohibition on Immoral or Scandalous Trademarks

By Alexsandar Nikolic

On June 24, the Supreme Court of the United States (SCOTUS) provided its long-awaited decision in Iancu v. Brunetti, 588 U.S. ___ (2019) by invalidating the Lanham Act’s prohibition on immoral or scandalous trademarks. In short, the Court held that the provision is unconstitutional because it conflicts with the First Amendment.

Before continuing with the case summary, a short distinction should be made between obtaining a trademark and registering a trademark with the United States Patent and Trademark Office (USPTO). A trademark identifies the source of a good or service and is obtained by virtue of the mark’s use in commerce. Registration is a step which grants certain benefits to trademark holders, including a presumption of trademark validity, national public notice, limits on infringer defenses, and access to federal statutory damages.

The Lanham Act creates a trademark registration system with the USPTO as administrators. Under 15 U.S.C. 1052(a), a trademark may be denied registration if it “consists of … immoral or … scandalous matter.” Designer and entrepreneur Erik Brunetti has a clothing line that uses the trademark FUCT, which he attempted to register with the USPTO. Mr. Brunetti indicates that the mark is pronounced as the four letters. However, the mark may also be interpreted as “‘the equivalent of [the] past participle form of a well-known word of profanity.'” This latter interpretation prevented Mr. Brunetti from being able to register his trademark with the USPTO.

When Mr. Brunetti attempted to register his trademark with the USPTO, however, his application was denied. Both the USPTO examining attorney and the Trademark Trial and Appeal Board determined that the mark was immoral and scandalous, denying Mr. Brunetti registration for his trademark. Mr. Brunetti then appealed to the Court of Appeals for the Federal Circuit (CAFC), where the CAFC determined that the prohibition on immoral or scandalous trademarks was unconstitutional. The Supreme Court granted certiorari after the USPTO appealed.

The Lanham Act indicates that the USPTO may deny registration under certain conditions. Nonetheless, the Supreme Court determined that a denial for immoral or scandalous matter was unconstitutional because it touches on the First Amendment. In particular, the Court determined that speech based on ideas or opinions may not be curbed by the government. Thus, government discrimination based on viewpoint is unconstitutional.

In the decision in Matal v. Tam, 137 S.Ct. 1744 (2017) the Court decided that the prohibition on disparaging marks was unconstitutional because the prohibition was viewpoint based. With the Brunetti decision, the Court extended the scope of unconstitutional prohibitions to include immoral and scandalous marks.

The Supreme Court decision was written by Justice Kagan, and joined by Justices Thomas, Ginsburg, Gorsuch, Kavanaugh, and Alito, with Justice Alito providing a concurring opinion. Justices Roberts, Breyer, and Sotomayor each wrote an opinion that concurred in part and dissented in part.

All the justices agreed that the term “immoral” was overly broad and subjective. The justices also agreed that a more narrowly tailored statute may be created by Congress to prevent vulgarity without impinging on the expression of ideas.

The three Justices that dissented in part suggested that 15 U.S.C. 1052(a) should have been interpreted so that a narrower interpretation of the term “scandalous” could be applied to marks. Justice Roberts suggested that marks that offend because of the “mode of expression” could be denied while marks that offend because of the idea conveyed should be allowed. Justice Breyer suggested that the statute should be narrowly interpreted with a balance of harms versus justifications test applied when examining scandalous marks. Justice Sotomayor stated that the government should have some leeway to judge scandalous content in light of the dispute being over registration of the mark, not over the existence of a protected mark. Since registration conferred a benefit protected by the government, the government should have the power to regulate.

It appears as if it is up to Congress to make changes to 15 U.S.C. 1052(a) if it intends to prevent registration of marks that may be vulgar or lewd without offering or expressing ideas. As of now, it appears as if FUCT is on its way to becoming a registered mark.