Long-Held Prohibition on Scandalous and Immoral Trademarks Struck Down by Supreme Court: Upholding the First Amendment

Post Authored by Stephanie Nikitenko

On June 24, 2019 and in a 6-3 ruling, the Supreme Court struck down a long-held provision of the Lanham Act prohibiting trademark registration for marks deemed “immoral or scandalous” in Iancu v. Brunetti. [1]  This language could be found in § 1052(a), among others, that prohibit trademark registration:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

  • Consists of or comprises 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. [2]

This decision follows Matal v. Tam, a 2017 Supreme Court case that allowed disparaging trademarks to receive federal registration under the First Amendment. Previously, those marks were banned under § 1052(a). In Tam, the Court declared the Lanham Act’s ban on registering marks “disparag[ing]” any “person, living or dead” unconstitutional. [3] The divided Court agreed on two propositions: first, if a trademark registration bar was viewpoint-based, it was unconstitutional; second, the ban on disparaging marks was viewpoint-based. [4]

In Brunetti, Erik Brunetti sought to register the trademark FUCT for use with a clothing line. [5] Launched in 1990 and aimed at young adults, Brunetti’s clothing line consists mainly of hoodies, loose pants, shorts, and T-shirts and prominently displays the word FUCT. [6] Ever since the clothing line debuted, Brunetti tried to get the brand name trademarked, in order to pursue copycats. The copycats, according to him, made counterfeit goods that prevented him from earning a considerable amount of money. [7] While, according to Brunetti, the mark was pronounced F, U, C, T (the four letters spelled out), the U.S. Patent and Trademark Office (“USPTO”) interpreted the mark to mean “the equivalent of the past participle form of a well-known word of profanity.” [8]

The majority opinion in Brunetti was authored by Justice Elena Kagan, and she found the “immoral or scandalous” bar discriminated on the basis of viewpoint and violated the First Amendment. [9] In her opinion, Justice Kagan wrote that “the statute on its face 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.” [10] All nine of the justices agreed that the federal law banning “immoral” trademarks was too broad and that it would allow the government to grant trademarks to messages it approved and deny trademarks for messages it disapproved. [11] When it came to “scandalous” trademarks, however, the united front was no more. [12]

Chief Justice Roberts concurred in part and dissented in part, stating that “[t]he Government, meanwhile, has an interest in not associating itself with trademarks whose content is obscene, vulgar, or profane. The First Amendment protects the freedom of speech; it does not require the Government to give aid and comfort to those using obscene, vulgar, and profane modes of expression.” [13] Even though Justice Alito concurred with the majority opinion, he expressed concerns about the potential for Congress to enact “a more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas.” [14]

The Brunetti decision showcases the Supreme Court’s dedication to upholding the integrity of the First Amendment and allowing creators the opportunity to fully express themselves under the Constitution. While the governmental agencies may not want to promote or associate themselves with any form of scandalous or promiscuous language, under trademark law, the word is only associated with the goods or services of the trademark owner. Such marks should thus be registered, in order to protect the mark and the creator’s brand.

[1] Megan Carpenter, Opinion analysis: Long-time prohibition on registration of scandalous and immoral trademarks is struck down, SCOTUS Blog (June 24, 2019, 6:59 PM), https://www.scotusblog.com/2019/06/long-time-prohibition-on-registration-of-scandalous-and-immoral-trademarks-is-struck-down/.

[2] 15 U.S.C. § 1052 (2006) (emphasis added).

[3] Iancu v. Brunetti, 139 S. Ct. 2294, 2296 (2019).

[4] Id.

[5] Eric R. Moran & Kevin Noonan, Supreme Court Strikes Down Ban on “Immoral and Scandalous” Trademarks, Patent Docs (June 27, 2019, 11:17 PM), https://www.patentdocs.org/2019/06/supreme-court-strikes-down-ban-on-immoral-and-scandalous-trademarks.html.

[6] Nina Totenberg & Domenico Montanaro, Supreme Court Strikes Down Ban On Trademarking ‘Immoral,’ ‘Scandalous’ Words, Symbols, NPR (June 24, 2019, 10:44 AM), https://www.npr.org/2019/06/24/732512169/supreme-court-strikes-down-ban-on-trademarking-immoral-scandalous-words-symbols.

[7] Id.

[8] Moran & Noonan, supra note 5.

[9] Carpenter, supra note 1.

[10] Brunetti, supra note 3.

[11] Totenberg & Montanaro, supra note 6.

[12] Id.

[13] Brunetti, supra note 3, at 2304.

[14] Id at 2303.

About the Author:

stephanie.jpg

Stephanie Nikitenko is currently a 3L at The John Marshall Law School in Chicago. At John Marshall, she’s the President of the Intellectual Property Law Society (IPLS) and primarily concentrates her studies on the subject of Intellectual Property. She recently spent a semester working in the JMLS Trademark Clinic where she assisted clients with the Trademark Registration process with the USPTO. Additionally, under the supervision of an attorney, she currently assists a law firm with both their trademark and patent matters.

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