In a 6–3 opinion, the Supreme Court of the United States affirmed a 2017 US Court of Appeals for the Federal Circuit decision holding the ban on registration of immoral or scandalous trademarks under the Lanham Act to be an unconstitutional viewpoint restriction under the free speech guarantees of the First Amendment. Iancu v. Brunetti, Case No. 18-302 (S. Ct. June 24, 2019) (Kagan, Justice) (Alito, Justice, concurring) (Roberts, Chief Justice, concurring in part, dissenting in part) (Breyer, Justice, concurring in part, dissenting in part) (Sotomayor, Justice, concurring in part, dissenting in part).
In its 2017 decision in Matal v. Tam, the Supreme Court invalidated the Lanham Act’s proscription on the registration of disparaging trademarks under 15 USC § 1052(a) as a violation of the First Amendment (IP Update, Vol. 20, No. 6). In Brunetti, the Supreme Court dealt with the constitutionality of neighboring language in § 1052(a) that prohibits the registration of trademarks considered to be “immoral or scandalous.” For the same reasoning outlined in Matal—finding the trademark registration ban to discriminate on the basis of viewpoint—the Court determined that the US Patent and Trademark Office’s (PTO’s) refusal of immoral or scandalous trademarks disfavors certain ideas and thus infringes the First Amendment.
Background
The named respondent, Erik Brunetti, is an artist and entrepreneur who founded a streetwear line in 1991 under the brand name FUCT. Brunetti has always claimed that the FUCT trademark is pronounced by saying each of the four letters individually as F-U-C-T, but the PTO and the courts along the way have all noted that consumers may read and pronounce the mark differently, and in a manner phonetically identical to a popular curse word.
Brunetti had made at least one unsuccessful attempt to register the FUCT mark in relation to clothing goods as far back as 1993. But, it was only after Brunetti’s 2011 trademark application for the FUCT brand name was refused registration by both the PTO and the Trademark Trial and Appeal Board (TTAB) (under §2(a) of the Lanham Act as consisting of immoral or scandalous matter that a “substantial composite of the general public” would find “shocking,” “disgraceful” or “vulgar”) that he appealed to the Federal Circuit, which held that the proscription on registration of immoral or scandalous trademarks violated the First Amendment. The Supreme Court then granted certiorari.
Opinion of the Court
Before addressing the specific FUCT trademark at issue in Brunetti’s appeal, Justice Kagan provided a brief primer on the Matal decision, which held that if a trademark registration bar is viewpoint based, it is unconstitutional, since the government may not discriminate against speech based on the ideas or opinions conveyed by such speech. Thus, within this framework, the Court determined that the § 2(a) immoral or scandalous registration proscription similarly discriminates based on viewpoint, and is therefore unconstitutional. As Kagan wrote, “the ‘immoral or scandalous’ bar is substantially overbroad. There are a great many immoral and scandalous ideas in the world (even more than there are swearwords), and the Lanham Act covers them all. It therefore violates the First Amendment.”
The Immoral or Scandalous Registration Bar Is Viewpoint Based
The Supreme Court’s opinion examined dictionary definitions of the terms “immoral” and “scandalous” to assess the potential for viewpoint biases. Here, the Court determined that the statutory language invites the PTO to apply a viewpoint discriminatory position by accepting for registration trademarks that are “aligned with conventional moral standards,” and rejecting those trademarks that are hostile to such societal mores. The Court flagged specific examples of the PTO’s viewpoint-based acceptance or rejection standards in relation to trademarks with terms or imagery that referenced drugs, religion and terrorism. In short, the Court found that the PTO allows for registration of marks that express societally acceptable views (i.e., JESUS DIED FOR YOU) and refuses trademarks that do not necessarily reflect views that are widely acceptable to a “substantial composite of the general public” (i.e., BONG HITS 4 JESUS).
The Court Rejects the Government’s Limiting Construction of the Statute
Arguing in support of the “immoral or scandalous” basis for trademark registration refusal, the government alleged that the statute is susceptible to a limiting construction that removes any viewpoint bias. More specifically, the government proposed narrowing the § 2(a) registration bar to marks that are offensive or shocking to a substantial segment of the public only because of their mode of expression, and not tied to the expression of a viewpoint. According to the government, this “mode of expression” assessment would primarily pertain to marks that are “vulgar . . . lewd . . . sexually explicit or profane.”
The Supreme Court rejected the government’s proposal as an attempt to create a new statute instead of interpreting the law that Congress enacted. The Court pointed out that “the statute says something markedly different,” since the § 2(a) language does not limit trademark registration refusals to only lewd, sexually explicit or profane marks, nor does it consider only the “mode of expression” of a trademark.
In Justice Alito’s concurrence, he characterized the government’s proposal to reframe the statutory language as an attempt to “substitute a new statute for the one now in force,” and refused to do so. “The provision of the Lanham Act at issue in this case violates the Free Speech Clause of the First Amendment because it discriminates on the basis of viewpoint and cannot be fixed without rewriting the statute.”
Unlike the Matal v. Tam decision, in which a unanimous court agreed that the ban on disparaging trademarks was unconstitutional, in this case, Chief Justice Roberts and Justices Breyer and Sotomayor each authored opinions, dissenting in part, in which they proposed dividing the “immoral or scandalous” provision into its component parts. The dissenting justices opined that an “immoral” assessment likely contemplates viewpoint of the speech and thus is unconstitutional, but that the “scandalous” ban could be read as viewpoint neutral in banning truly “obscene, vulgar, or profane marks,” for which a registration proscription may not violate First Amendment protections. In the words of Chief Justice Roberts, “refusing registration to obscene, vulgar, or profane marks does not offend the First Amendment. Whether such marks can be registered does not affect the extent to which their owners may use them in commerce to identify goods. No speech is being restricted; no one is being punished. The owners of such marks are merely denied certain additional benefits associated with federal trademark registration.”
Practice Note: Pursuant to the Supreme Court’s decision, on July 3, 2019, the PTO issued updated guidelines on the review and registration of trademarks under § 2(a) of the Lanham Act. Any pending trademark applications that previously received an “immoral or scandalous” refusal and were suspended pending the Supreme Court’s determination in Brunetti will now be removed from suspension for further PTO review. The guidelines also invite the refiling of trademark applications previously refused registration under the now unconstitutional “immoral or scandalous” provision.
