Supreme Court Rules Ban on ‘Immoral or Scandalous’ Trademarks Unconstitutional

Background and Details

In 2011, Erik Brunetti sought to register a trademark for his clothing brand “FUCT.” The US Patent and Trademark Office refused Brunetti’s registration under Section 2(a) of the Lanham Act which bars the registration of marks consisting of “immoral or scandalous matter.” According to the examiner, refusal was required because a substantial composite of the general public would find “FUCT” vulgar. The refusal was appealed to and affirmed by the Trademark Trial and Appeal Board. However, the Federal Circuit held that while the TTAB did not err in finding that “FUCT” was comprised of immoral or scandalous matter, Section 2(a)’s bar on registering immoral or scandalous marks was an unconstitutional restriction of free speech. The USPTO subsequently petitioned the Supreme Court. The Court agreed to hear the case and oral arguments were held in April 2019.

On June 24, 2019, the Supreme Court held by a 6-3 vote that the Lanham Act’s prohibition on registration of immoral or scandalous trademarks violates the First Amendment. This decision comes less than two years after Matal v. Tam, in which the Court struck down a similar Lanham Act provision which prohibited the registration of “disparaging” marks. The Court applied the same reasoning here, finding that, as with the prohibition on registering disparaging marks, the prohibition on registering immoral or scandalous marks discriminates on the basis of viewpoint. Justice Kagan, writing for the majority, stated that “the statute, on its face, distinguishes between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them,” allowing for the registration of marks associated with the former but not the latter. The Court conceded that some marks may indeed be offensive to a majority of the public but that even a “law disfavoring ‘ideas that offend’ discriminates on the based on viewpoint, in violation of the First Amendment.”

The three dissenting judges agreed with the majority that the ban on immoral material was unconstitutional, but urged a narrower construction of the statute’s ban on scandalous material such that it only bars the registration of marks that are “obscene, vulgar or profane” in their mode of expression. The dissenting Justices opined that while the First Amendment protects freedom of speech, it “does not require the government to give aid and comfort to those using obscene, vulgar and profane modes of expression,” and that the “court ought to adopt the narrower construction, rather than permit a rush to register trademarks for even the most viscerally offensive words and images that one can image.” Notably, both the majority and dissenting Justices stated that this decision does not preclude Congress from enacting a statute which adopts this narrower construction.

Takeaway

The Court’s decision now allows for the registration of marks which were previously barred as “immoral or scandalous,” creating one fewer roadblock to trademark registration. While the Court signaled that it would possibly uphold a narrower statute barring only the registration of marks that are obscene, vulgar or profane in their mode of expression, until Congress chooses to adopt such a statute, marks like “FUCT” or “BONG HITS 4 JESUS” are now registerable.

This article was co-authored by Law Clerk Sarah Alberstein.