U.S. Supreme Court Allows Registration of “Immoral and Scandalous” Trademarks

Case: Iancu v. Brunetti, 139 S. Ct. 2294 (2019)

Decided on June 24, 2019

The Facts

Erik Brunetti, an artist and entrepreneur, filed a federal application to register his trademark FUCT as the brand name for his clothing line. The U.S. Patent & Trademark Office’s (USPTO) examining attorney denied his application, because the mark was “vulgar”. Brunetti appealed the examining attorney’s decision to the Trademark Trial & Appeal Board (TTAB). The TTAB also refused registration, finding that FUCT had “negative sexual connotations” and was “extremely offensive”. Brunetti challenged the TTAB’s decision, stating that it was a violation of the First Amendment of the U.S. Constitution.

The Law

  • The Lanham Act is a federal statute that governs the federal registration of trademarks. Section 1052(a) of the Lanham Act prohibits the registration of marks that consist of or comprise immoral or scandalous matter.
  • The First Amendment does not allow the government to discriminate against speech based on the ideas or opinions that speech conveys. Further, the government cannot discriminate against offensive ideas. This type of unconstitutional discrimination is called view-point discrimination.

The Reasoning

The government (USPTO) argued that the Lanham Act’s prohibition of the registration of immoral or scandalous marks was not view-point discrimination, but was actually viewpoint-neutral. The Court did not agree. The Court considered the dictionary definitions of “immoral” and “scandalous”, and reasoned that the Lanham Act allows the registration of marks when they are in line with, and do not defy, mainstream society’s sense of decency and morality.

The Court gave examples of how the USPTO applied this rule. The USPTO denied applications that seemed to approve of drug use (KO KANE and MARIJUANA COLA for beverages), but allowed the registration of marks that disapproved of drug use (D.A.R.E. TO RESIST DRUGS AND VIOLENCE). KO KANE and MARIJUANA COLA were marks that the USPTO deemed scandalous, as they seemed to glamorize drug abuse.

The government further argued that the Court should interpret Section 1052(a) of the Lanham Act in such a way so that it remains constitutional. The government wanted the Court to limit the application of the “immoral or scandalous” provision to marks that are offensive or shocking to the public because of their mode of expression (and not solely because of the views they express). More specifically, the government wanted the Court to limit the provision to marks that are lewd, vulgar or sexually explicit.

The Court refused to interpret the statute in the way the government suggested, as the Lanham Act’s prohibition did not provide such a limitation, but covered any mark considered immoral or scandalous. This was clear view-point discrimination.

The Ruling

Section 1052(a) of the Lanham Act, prohibiting the registration of marks deemed immoral and scandalous, violates the First Amendment.

 

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