July 1, 2019 • by Jeffrey Pote

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Last Monday, in a 6-3 decision, the Supreme Court issued its opinion in Iancu v. Brunetti, holding that "the Lanham Act's prohibition on registration of 'immoral or scandalous' trademarks violates the First Amendment."FN1 As a result, there is no longer a bar on registering marks with the United States Patent and Trademark Office (“USPTO”) that consist of or comprise offensive, obscene, profane, vulgar, or otherwise scandalous words or images.

In making this determination, the Court reexamined the logic of its decision in Matal v. Tam, where the Court had invalidated the provision of the Lanham Act barring registration of disparaging marks.FN2 In Tam, the Court found that the bar on disparaging marks engaged in "viewpoint discrimination" and therefore violated the First Amendment of the U.S. Constitution.

After all, marks that were disparaging of other persons could not be registered with the USPTO, while those that praised or were neutral towards others were, indeed, registrable. As a result, the provision unconstitutionally favored certain viewpoints and disfavored others.

In Brunetti, the Court extended this reasoning to marks that are either immoral or scandalous. Brunetti had made several attempts to register his FUCT mark for his line of clothing. But the USPTO rejected Brunetti’s mark, both initially and upon review, stating that the mark was "highly offensive," "vulgar," and that it had "decidedly negative sexual connotations."FN3

a red sign with a police officer or other offical in a blue suit bent over and kissing a horizontal solid bar with two small pink hearts in front of the bar.

For marks that are questionably immoral or scandalous, the USPTO "asks whether a 'substantial composite of the general public' would find the mark 'shocking to the sense of truth, decency, or propriety'; 'giving offense to the conscience or moral feelings'; 'calling out for condemnation'; 'disgraceful'; 'offensive'; 'disreputable'; or 'vulgar.'"FN4 A positive answer to any of these questions indicates that the mark is unregistrable as immoral or scandalous.

As determined by the USPTO, the FUCT mark clearly fell within this "immoral or scandalous" provision and thus could not be registered. However, the Supreme Court, on the grounds that "the government may not discriminate against speech based on the ideas or opinions it conveys," found that the provision barring registration of immoral or scandalous marks – like the provision barring disparaging marks – was unconstitutional.FN5

The Court concluded that the Lanham Act's provision barring registration of immoral or scandalous marks "infringes on the First Amendment for the same reason" that the bar on disparaging marks did: "It too disfavors certain ideas."

In arriving at this conclusion, the Supreme Court noted that "the 'immoral or scandalous' bar similarly discriminates on the basis of viewpoint and so collides with this Court's First Amendment doctrine."FN6 As a result, the Court concluded that the Lanham Act's provision barring registration of immoral or scandalous marks "infringes on the First Amendment for the same reason" that the bar on disparaging marks did: "It too disfavors certain ideas."FN7

The Future of Immoral or Scandalous Trademarks:

As was noted in a previous entry, an application for trademark registration may be rejected because the proposed mark is too generic or descriptive. Marks may also be rejected because they are deceptive or likely to cause consumer confusion. But after the decision in Brunetti, registration cannot be rejected on account of a word or image being disfavored or unpopular according to conventional or societal norms or mores. To do so would be to engage in viewpoint discrimination and that violates the First Amendment.

In practice, this means that those who wish to use words or images that previously would have been rejected as "immoral or scandalous" can now not only use those marks in commerce, but also gain the benefits of registering those marks with the USPTO. Underscoring this point, Justice Sotomayor in her dissent states that the USPTO now has "no statutory basis to refuse (and thus no choice but to begin) registering marks containing the most vulgar, profane, or obscene words and images imaginable."FN8

The Brunetti decision is a win for those battling for the freedom to register trademarks that may shock or offend certain segments of our society. But it may be just the first victory in what seems likely to evolve into a long conflict that involves additional judicial or legislative action.

The decision was not unanimous and the Chief Justice and two other Justices each wrote separate partial dissents. Moreover, even some concurring Justices specifically voiced concern about the decision and noted that (at least under an amended statute) Congress did indeed have the power to bar the registration of marks that contain or comprise obscenity, profanity, or vulgarity.FN8

The Justices critical of the Brunetti decision distinguished between discriminating against certain ideas and discriminating against a manner of expression. While they agreed that the government cannot discriminate against ideas, it is sometimes permissible to prohibit certain manners of expressing ideas.

For example, Chief Justice Roberts stated that "refusing registration to obscene, vulgar, or profane marks does not offend the First Amendment," adding that no one's "speech is being restricted; no one is being punished."FN10 As a result, he and the other dissenting Justices indicated that, with respect to government benefits like federal trademark registration, Congress could prohibit the registration of words or images containing or comprising obscenity, profanity or vulgarity.

In a separate partial dissent, Justice Breyer raised the question, "How much harm to First Amendment interests does a bar on registering highly vulgar or obscene trademarks work?"FN11 And he answered: "Not much. The statute leaves businesses free to use highly vulgar or obscene words on their products, and even to use such words directly next to other registered marks. Indeed, a business owner might even use a vulgar word as a trademark, provided that he or she is willing to forgo the benefits of registration."FN12

Chief Justice Roberts stated that "refusing registration to obscene, vulgar, or profane marks does not offend the First Amendment," adding that no one's "speech is being restricted; no one is being punished."

While the dissenting Justices agreed that the prohibition on registering immoral marks was unconstitutional, they disagreed that scandalous marks necessarily engaged in viewpoint discrimination and therefore violated the First Amendment. To these Justices, scandalous marks were precisely those marks that were shocking or offensive on account of the manner of their expression and thus should be understood as banning not any viewpoint but only words or images that are obscene, profane, or vulgar.FN13

For these Justices, the registration of trademarks offered by the USPTO under the Lanham Act is a highly regulated and optional government benefit. Trademark registration, they noted, "is not required for using, owning, or suing others for infringing a trademark. Rather, the trademark-registration system is an ancillary system set up by the Government that confers a small number of noncash benefits on trademark-holders who register their marks." Moreover, "the Government need not provide this largely commercial benefit at all."FN14

For now, both immoral and scandalous marks are registrable. What’s less clear is how long that will remain the status quo - esp. given the willingness of many Justices find that Congress has the power to bar the registration of obscene, profane or vulgar words or images. While immoral marks are likely to continue to receive First Amendment protection, the future for scandalous marks is much less certain.

While it is possible for registered marks to be canceled or invalidated, once registered a trademark-holder has rights that the holder of an unregistered mark does not. Future entries will delve into this topic more fully, but for now it is worth noting that, if the invalidation or cancelation of a registered mark is sought, the owner of the registered mark will be entitled to notice and may be able to successfully challenge that action.

If you would like to find out how PLF can provide assistance with trademark searches or registration, please Reach out, Today!

Click Here to Toggle End Notes:

FN1: Iancu v. Brunetti, 588 U.S. ___ (2019). Following the practice of the USPTO, the Supreme Court considered the bar on immoral or scandalous marks as a "unitary provision, rather than treating the two adjectives in it separately." In her partial dissent, Justice Sotomayor is critical of this move and argues that immoral marks and scandalous marks should be considered separately.

FN2: Matal v. Tam, 582 U.S. ___ (2017).

FN3: Iancu v. Brunetti, 588 U.S. ___ (2019). Indeed, the USPTO board upon review had suggested that they thought the mark communicated "misogyny, depravity, and violence."

FN4: Iancu v. Brunetti, 588 U.S. ___ (2019) (citing In re Brunetti, 877 F.3d 1330 (CA Fed. 2017).

FN5: Iancu v. Brunetti, 588 U.S. ___ (2019).

FN6: Id.

FN7: Id.

FN8: Iancu v. Brunetti, 588 U.S. ___ (2019) (Sotomayor, J. dissenting).

FN9: For example, Justice Alito, despite agreeing with the decision, asserted that the FUCT mark and those like it are "not needed to express any idea," indicating that he did not think it was protected under the First Amendment on account of expressing a viewpoint. Iancu v. Brunetti, 588 U.S. ___ (2019) (Alito, J. concurring).

FN10: Iancu v. Brunetti, 588 U.S. ___ (2019) (Roberts, C.J. dissenting) (adding, "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.").

FN11: Iancu v. Brunetti, 588 U.S. ___ (2019) (Breyer, J. dissenting).

FN12: Id. In the opinion of Justice Breyer, "highly vulgar words" are "attention-grabbing words" that "threaten to distract consumers and disrupt commerce" As a result, the government "has an interest in seeking to disincentivize the use of such words in commerce by denying the benefit of trademark registration."

FN13: Id. See also Iancu v. Brunetti, 588 U.S. ___ (2019) (Sotomayor, J. dissenting).

FN14: Iancu v. Brunetti, 588 U.S. ___ (2019) (Sotomayor, J. dissenting). Justice Breyer refers to trademark law as "a highly regulated [field] with a specialized mission: to 'help consumers identify goods and services that they wish to purchase, as well as those they want to avoid' -- adding that "that mission, by its very nature, requires the Government to impose limitations on speech." Iancu v. Brunetti, 588 U.S. ___ (2019) (Breyer, J. dissenting).

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