Supreme Court Strikes Down Bar To Registration Of 'Immoral' Or 'Scandalous' Trademarks

Author:Ms Julia Matheson and Brendan C. Quinn
Profession:Hogan Lovells

Today the US Supreme Court announced its opinion in Iancu v. Brunetti, holding that the Lanham Act's provisions barring the registration of "scandalous" or "immoral" trademarks are unconstitutional under the First Amendment.

The facts are straightforward: Erik Brunetti applied to register the trademark FUCT for millennial street clothes. The USPTO denied registration under Section 2(a) of the Trademark Act (15 U.S.C. § 1052(a)) finding the mark "scandalous" and "immoral." The USPTO's decision stood in stark contrast to its other decisions granting registration to the marks FCUK, THE F WORD, and FVCK STREET WEAR, while denying registration to F U, EFFU, and FVCKED for similar goods. On appeal, while the Federal Circuit agreed with the USPTO's conclusion that FUCT was vulgar and therefore unregistrable, it reversed, concluding that Section 2(a)'s bar on registration of scandalous and immoral trademarks violated the free speech provisions of the First Amendment.

The Brunetti case follows closely on the Supreme Court's 2017 decision in Matal v. Tam, 137 S. Ct. 1744, which struck down the Lanham Act's prohibition on registration of "disparaging" trademarks. Tam was a plurality opinion, as all justices agreed that the disparagement prohibition was unconstitutional viewpoint-based discrimination, but no majority agreed on the reasoning as to why.

Writing for the majority in Brunetti, Justice Kagan emphasized that unlike in Tam, the Court has issued a majority opinion holding that the "immoral or scandalous" trademark ban also discriminates on the basis of viewpoint (i.e., disfavors certain ideas) and therefore runs afoul of the First Amendment. The Court rejected the USPTO's contention that it was possible to save the Lanham Act's language with a "limiting construction" by reading the terms "immoral" and "scandalous" individually, rather than collectively (as they historically have been interpreted by the USPTO and courts).

Such a narrow interpretation would have "scandalous" interpreted as blocking registrations based on the mode or manner of use of the marks so as to prevent registration of vulgar, lewd, or obscene marks. The Court refused this interpretation of the statute, finding that the term "scandalous" could include marks that both offend by virtue of the ideas they convey and marks that offend by virtue of their mode of expression. The Court observed, "[t]here are a great many immoral and scandalous ideas in the world (even more than...

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