25 Jun
2019

Iancu v Brunetti ruling – trademark community has its say on implications of momentous US Supreme Court decision

The US Supreme Court has handed down its ruling in Iancu v Brunetti, holding that the Lanham Act’s prohibition on the registration of “immoral” or “scandalous” trademarks violates the First Amendment. WTR reached out to a number of leading trademark experts to explore the possible implications of the decision, for applicants, the US Patent and Trademark Office (USPTO) and the future of the trademark ecosystem.

WTR has already published an outline on the ruling, and the USPTO’s brief response that it is “currently reviewing the decision”. Below, experts share their view on Iancu v Brunetti. We will be updating this article over the next 24 hours, so stay tuned.

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“Dissents’ view is a clear invitation to Congress to fill the void with new legislation”

David H Bernstein is a partner at Debevoise & Plimpton and was counsel to record to INTA on its amicus brief in favour of affirmance:

The Court’s decision is a ringing endorsement for the free speech principles that are so central to our democracy, and for the right of brand owners to use and register marks that are distinctive and in which they have developed goodwill, even if those marks may offend some segments of the population. As we argued in the INTA amicus brief, if someone is offended, they do not have to buy the product, but that should not deprive trademark owners of the statutory advantages of registration. That is especially important given the changing norms and attitudes in our society.

Justice Alito’s short concurrence is notable for his recognition that, in these turbulent times, with repeated attacks on the media and the increasing tolerance for viewpoint discrimination, it is vital that the Court reaffirm the importance of the freedom of speech.

The dissents’ view that the prohibition on scandalous marks may still be upheld, combined with the majority’s comments about lewd and profane marks, is a clear invitation to Congress to fill the void with new legislation. I remain concerned that even such a restriction would unfairly restrict brand owners from using trademarks (like FUCT) that may have goodwill simply because some trademark examiner finds it scandalous - which is an inherently subjective judgment. We do not, for example, have any such restrictions on what kinds of books, movies and other forms of expression can be registered by the Copyright Office. That battle will have to await another day after we see what new restrictions Congress may decide to add to the Lanham Act.

“We can’t just hand the USPTO a list”

Anne Gilson LaLonde is the author of Gilson On Trademarks, a multi-volume treatise on United States trademark law:

Can we please just stop reading after the Brunetti majority opinion? Like closing a novel before everything goes to hell for the protagonist. The opinion of the Court is clear, well-reasoned and inevitable: The viewpoint bias inherent in the scandalousness bar infringes the First Amendment because it disfavors certain ideas. The Court doesn’t grasp at the government’s promise to change its ways and limit its interpretation of the statute to really, really bad words from now on.

But then the four additional opinions dangle the prospect of a brand new statutory bar that promises to keep the register clean and safe: No registration of “marks containing vulgar terms that play no real part in the expression of ideas” (Alito), “obscene, vulgar, or profane marks” (Roberts), “highly vulgar or obscene words” (Breyer), or “the most vulgar, profane, or obscene words and images imaginable” (Sotomayor). And how is that different than what we have now? Impossible to say. Are misspellings vulgar? Sound-alikes? Undeniably viewpoint-based marks like FUCK RACISM? We can’t just hand the USPTO a list, an idea some members of the Court floated at oral argument. That’s not how language – or trademark law – works.

“May have greater consequences outside of trademark law than within it”

Ted Davis is a partner at Kilpatrick Townsend & Stockton:

The opinion is additional evidence the Court may be jettisoning some of its prior models for evaluating the constitutionality of government actions in favor of one based on the perceived viewpoint-discriminatory effect of those actions. The Court’s use of that framework in this particular case should come as no surprise. All eight participating Justices in the related case of Matal v Tam, 137 S. Ct. 1744 (2017), took the same approach, albeit in competing four-Justice opinions. Even if newly installed Justices Gorsuch and Kavanaugh took a different approach – and they did not – that likely would not have affected the outcome. Nevertheless, as Justice Breyer’s and Justice Sotomayor’s opinions point out, the Court had other First Amendment models available to it, including public-forum, government-subsidy, void-for-vagueness, and proportionality analyses. (The Court’s own opinion acknowledges yet another model, namely, that of substantial overbreadth.)

Ironically, the Court’s decision to apply the viewpoint-discrimination model at the expense of these alternatives – a decision possibly mandated as a practical matter by Tam – may have greater consequences outside of trademark law than within it. Many of the grounds for the refusal of applications under Section 2 of the Lanham Act address deceptive marks or those likely to cause confusion, and congressional regulation of false and misleading commercial speech is generally not subject to constitutional scrutiny. Likewise, most of the remaining grounds for refusal are content discriminatory, rather than viewpoint discriminatory, and likely can survive intermediate scrutiny. Finally, the registrability of marks such as Brunetti’s does not necessarily render them effective brands; whether registrable or not, genuinely offensive marks are unlikely to make a material impact in the marketplace.

“A road map for legislative action which I expect the USPTO will pursue”

Marsha Gentner is a Senior Counsel in Dykema's Intellectual Property Group:

There is a road map here for legislative action which I expect the USPTO will pursue – a provision that bars registration, at least, of obscene, vulgar, or profane marks; the 3 dissenters expressly indicated such a provision would withstand a First Amendment challenge, and the majority opinion hints at that (while disavowing any express ruling in this regard).

An interesting question is raised by a footnote [5] in Justice Sotomayor’s dissenting opinion – that is, whether the USPTO will try to include in such legislation a ban on the registration of “racial or ethnic epithets”. The footnote in question refers euphemistically to “one particularly egregious racial epithet” and notes that the USPTO has held in abeyance pending the determination in this case applications which include that term. Since Matal v Tam concerned such a racial epithet albeit a different statutory provision it is at least questionable whether such a prohibition would survive a First Amendment challenge; Justice Sotomayor does cite to a Coast Guard regulation (46 CFR §67.117(b)(3) (2018)) prohibiting vessel names that “contain” or are “phonetically identical to obscene, indecent, or profane language, or to “racial or ethnic epithets”. Were such legislation to be enacted, this could revive the whole Redskins (the Washington NFL team) controversy.

“An impermissible viewpoint-based violation of the First Amendment”

Simon Frankel is chair of Covington & Burling’s intellectual property rights practice group:

Given the Court's 2017 decision in In re Tam – finding unconstitutional a restriction in registration of "disparaging" trademarks – today's decision is not very surprising. The Court extended its prior decision to find unconstitutional a prohibition on registration of trademarks that are "immoral" or "scandalous," as also an impermissible viewpoint-based violation of the First Amendment. It is important to remember that this decision only means that trademarks such as the one at issue - for FUCT in connection with clothing - can receive a federal trademark registration. Even without this decision, such marks can be used to identify the source of goods or services and can be enforced as unregistered marks under the Lanham Act.

“The implications are potentially broad”

Alan Behr is a partner at Phillips Nizer:

For a very long time, not many people in the trademark bar questioned the constitutionality of prohibitions against disparaging, immoral or scandalous marks and worked within them – even as those standards changed over the years with shifts in public morality and taste. The implications are potentially broad, starting with those awkward and deeply suspect attempts, now quite active in state (and private) universities, to limit or control “hate speech.” If elements of that kind of speech can now be registered as trademarks for commercial products, any attempt to determine what is hate speech in a political or social context and then to employ governmental instrumentalities to limit it would now appear to be impermissible.

The prohibition against the registration of immoral or scandalous matter has been in the Lanham Act for so long, it has been taken quite as a given. Any First Amendment concerns had been dismissed by the application of the standard that deems trademarks to fall within commercial speech, which typically gets less protection than political or religious speech. The court chipped away at the concept of governmental examination of the propriety trademarks in its recent decision in Matal v Tam (The Slants case). That holding, on the narrow issue of disparagement, was based upon the proposition that to deny trademark registration over a viewpoint is unconstitutional, and disparagement is a question of viewpoint.

This new decision is the proverbial “other shoe dropping,” applying that same analysis to “immoral or scandalous” marks: to call them such is to take a point of view, and that is a violation of the First Amendment. Even if a trademark is contrary to social norms of morality, the court held, it cannot be denied registration because doing so is to take a position on morality – to endorse a perception of socially accepted norms, in effect, through the federal trademark Register, and that is a First Amendment violation. Teachers of jurisprudence have long sought to explain the law as a manifestation of societal expectations concerning just those things. The prohibitions that were struck down in these two cases had been in a relatively quiet part of trademark law.

“Highlights that the First Amendment remains a robust and vibrant force in our democracy”

Marshall Schmidt is a member of Michael Best’s IP practice group:

The Supreme Court’s decision today in Iancu v Brunetti, rejecting that the ban on registration of “immoral or scandalous” trademarks, is the rare case where the oral argument for the most part foreshadowed the outcome. During the oral argument, it was clear that the justices were struggling to grapple with drawing a line on marks that everyone acknowledged were offensive.

The majority opinion and multiple concurring and dissenting opinions are the product of that struggle. Writing for the majority, Justice Kagan articulates unequivocally that the statue is unconstitutional on its face and that the government’s invitation to salvage the statute through a narrowing interpretation would be tantamount to rewriting the statute. She resists the temptation to opine on what alternative statute would pass constitutional muster and inserts a telling footnote to that effect, which prompts Justice Alito to provide guidance as to what he believes Congress needs to do to comply with the First Amendment. Another interesting facet of the majority opinion is how Justice Kagan uses actual examples of marks granted and denied registration to bolster the finding that, on its face, the statute is unconstitutional. Such analyses are usually limited to “as applied” challenges. Justice Breyer adopts Justice Sotomayor’s detailed linguistic analysis of the phrase “immoral or scandalous,” but also attempts to articulate a doctrinal approach as to why the rationale for the First Amendment leads to the same result. As he indicated in the oral argument he might, Chief Justice Roberts finds at bottom that banning registration of marks like the one at issue do not offend the First Amendment because no one is being punished and the government is not obligated to facilitate speech only to not abridge it.

Several times throughout the review of the case, various parties observed that, whether a mark is registered or not, it can be used in commerce. The multiple decisions are a fascinating study in how the justices understand the First Amendment is to be interpreted and applied in our society and how traditional conservative and liberal labels frequently lose meaning with such constitutional issues. Most important, the decision and the opinions highlight that the First Amendment remains a robust and vibrant force in our democracy worthy of respect by all who sit on the Court no matter how they decide any particular case.”

“Mr Brunetti should now be able to register his claimed mark, FUCT”

Jonathan E. Moskin is partner and IP lawyer with Foley & Lardner:

As a result of the decision, Mr Brunetti should now be able to register his claimed mark, FUCT for clothing. However, just as the Court acknowledged that immorality and scandalousness are defined as “giving offense to the conscience or moral feelings,” it is doubtful many such marks or the products that bear them will ever attain wide commercial acceptance. Moreover, for the same reason that expressions of viewpoints cannot be barred under the First Amendment, most such expressions placed on clothing or other goods are not used to designate origin but are instead used in a “merely ornamental” fashion to express a viewpoint (including to shock or offend viewers) rather than to indicate source. Stated differently, Mr Brunetti’s chosen name for his streetwear brand may be a household word – but not because it adorns any of his goods and not because his goods will be found in many households. For these interrelated reasons, it and most other such claimed marks likely still may not be entitled to protection.”

“Applicants should not expect consistency”

William Stroever is co-chair of the intellectual property department at Cole Schotz:

Today’s decision in the Iancu v Brunetti case will almost certainly bring a rush of new applications to the Trademark Office as individuals and business try to grab the first spot in line to try to register their favourite cuss words. And while the Supreme Court’s decision will certainly broaden the kinds of marks permitted for registration, it will not bring a free-for-all at the USPTO. To qualify for federal trademark registration, the use of a mark in commerce must be lawful. Applicants should expect that the USPTO will rely on other statutes to prevent things like hate speech, libel, and defamation. The Supreme Court also emphasised repeatedly in its decision that it was interpreting the statute as written, and that it did not have Congress’ power to fashion a new statute. It is possible that Congress will revise or redraft the statute in the future to focus more on the mode of a trademark’s expression rather than the underlying views represented by that trademark. Whatever the future holds, applicants should not expect consistency – at least at first. The immoral/scandalous restriction was hard enough for the USPTO to apply consistently even when it had a statute.

“May result in a flurry of inter partes litigation”

Lucy Jewett Wheatley is a partner at McGuireWoods:

While not surprising in light of the Supreme Court’s decision in Tam to find a ban on “disparaging” trademarks unconstitutional, the Supreme Court’s decision in Brunetti is certainly significant, as together, the decisions remove any legal means for the USPTO to refuse to register offensive or vulgar marks, at least on those grounds. A search of pending applications at the USPTO for popular “four-letter” words indicates that there are quite a few pending applications that will be impacted by this ruling, and the number of such applications is likely to grow. The ruling may also result in a flurry of inter partes litigation at the U.S.P.T.O. between various applicants for common curse words regarding who was the first to use in commerce, and who therefore should be entitled to a trademark registration in this space, which is sure to involve some entertaining briefing. However, the new owners of vulgar trademarks may not be able to hold on to their registrations – the Supreme Court’s majority opinion, and the various concurrences and dissents, certainly suggest that Congress can in the future amend the Lanham Act using more focused language, and allow the USPTO to bar “vulgar” or “lewd” trademarks in a content neutral manner. Though the majority opinion is quite short, that this was a challenging case for the Court is obvious from how the justices split, with a majority opinion authored by Justice Kagan and joined by Justices Thomas, Ginsburg, Alito, Gorsuch and Kavanaugh, a separate concurrence from Justice Alito, and with Chief Justice Roberts and Justices Breyer, and Sotomayor all dissenting in part.

“Not surprising at all”

Jason Bloom is a partner and head of the copyright practice group at Haynes and Boone:

Post Tam, the outcome is not surprising at all, and is the right one. The court properly found the morality clause, like the disparagement clause, to be viewpoint discrimination. Moreover, having trademark examiners make determinations on what is and isn’t immoral naturally leads to inconsistent results. And there just aren’t any compelling policy reasons for the government to be able to deny registrations on morality grounds – certainly none that outweigh the First Amendment concerns.

“Supreme Court has basically invited Congress to write a new statute”

Joshua Dalton, is a partner and co-leader of the trademark and copyright litigation practice at Morgan Lewis:

As expected after the Supreme Court’s decision in Matal v Tam, the bar on registration of scandalous trademarks has met a similar fate as the disparagement bar the Court considered and struck down in 2017 on First Amendment grounds. This outcome, however, may be of relatively little importance to most brands. To be sure, a company wishing to identify itself or its product by a mark that would previously have been considered scandalous, a curse for example, is going to be better positioned to register and protect that brand. However, only a relatively small subset of brands are willing to invest in a mark containing a scandalous term with the goal of making that mark a source identifier. The rare applicant that wants to brand a four letter word in connection with its goods or services may be in luck, but this ruling is not likely to impact the overall branding strategy for too many applicants. Long term, the Supreme Court has basically invited Congress to write a new statute that limits the prohibition to restriction to those marks that are “lewd, sexually explicit, or profane” regardless of viewpoint. It seems likely that Congress will attempt to take the Supreme Court up on its suggestion.

“Takes the ruling in Tam and extends it to its logical conclusion”

David Fink is a partner at Venable in the commercial litigation practice in Los Angeles:

Iancu v Brunetti finishes the sentence that was started in the Matal v Tam case. It takes the ruling in Tam and extends it to its logical conclusion that both “disparaging” speech and “immoral” speech are still protected speech under the First Amendment. The Lanham Act cannot diminish those protections.

"PTO can still reject obscene or vulgar marks on other grounds"

Richard Z. Lehv is a senior litigation counsel at Fross Zelnick Lehrman & Zissu:

The Brunetti decision means that the PTO can no longer reject marks on the ground that they are “immoral or scandalous”. However, the PTO can still reject obscene or vulgar marks on other grounds, including that the proposed mark fails to function as a trademark, that it is merely a commonplace phrase printed on a t-shirt, or that it is laudatory, or merely descriptive, or deceptively misdescriptive.  In addition, the PTO has been looking closely at specimens of use, and can reject an application if the specimen seems not to be genuine, but prepared merely to support the filing of an application.

Tim Lince

Author | Senior reporter

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Tim Lince