24 Jun
2019

Ban on the registration of “immoral or scandalous” trademarks struck down by US Supreme Court

  • Lanham Act’s prohibition on registration of scandalous marks held to violate First Amendment
  • Supreme Court rejects government argument that statutory bar could be narrowed
  • USPTO’s spokesperson tells WTR the office is now “reviewing the decision”

The US Supreme Court has handed down its highly anticipated ruling in Iancu v Brunetti, holding that The Lanham Act’s prohibition on the registration of “immoral [or] scandalous” trademarks violates the First Amendment.

In January, the US Supreme Court agreed to review Iancu v Brunetti, following a USPTO petition for a rehearing en banc in In re: Brunetti, the office contending that a Federal Circuit’s decision on the registrability of the FUCT mark “invalidates a century-old provision of federal trademark law that renders trademarks containing ‘scandalous’ and ‘immoral’ matter ineligible for the benefits of federal registration”. On the other side of the clash was respondent Erik Brunetti, who had brought a first amendment challenge to the “immoral or scandalous” bar in the Federal Circuit, which invalidated the provision.

Today the Supreme Court sided with the latter, holding that the Lanham Act’s prohibition on the registration of “immoral or scandalous” trademarks does violate the First Amendment. At the heart of the decision was similar reasoning to its previous ruling in the case involving Asian-American rock band The Slants.

Specifically, it stated: “In Matal v. Tam… a divided Court agreed on two propositions. First, if a trademark registration bar is viewpoint based, it is unconstitutional. And second, the disparagement bar was viewpoint based. The “immoral or scandalous” bar similarly discriminates on the basis of viewpoint and so collides with this Court’s First Amendment doctrine.”

The ruling expanded: “Expressive material is ‘immoral’ when it is ‘inconsistent with rectitude, purity, or good morals’; ‘wicked’; or ‘vicious’. So the Lanham Act permits registration of marks that champion society’s sense of rectitude and morality, but not marks that denigrate those concepts. And material is ‘scandalous’ when it ‘giv[es] offense to the conscience or moral feelings’; ‘excite[s] reprobation’; or ‘call[s] out condemnation’.” So the Lanham Act allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety. 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.”

Delving further into this viewpoint dimension, the court noted that, while the USPTO has refused to register marks communicating “immoral” or “scandalous” views about (among other things) drug use, religion, and terrorism, it has also approved the registration of marks expressing more accepted views on the same topics.

The government had argued that the statute is susceptible of a limiting construction that would remove its viewpoint bias, narrowing the statutory bar to “marks that are offensive [or] shocking because of their mode of expression, independent of any views that they may express”, which the court noted would mostly restrict the PTO to refusing marks that are lewd, sexually explicit, or profane.

However, today’s opinion concluded: “This Court cannot accept the Government’s proposal, because the statute says something markedly different. The “immoral or scandalous” bar does not draw the line at lewd, sexually explicit, or profane marks. Nor does it refer only to marks whose “mode of expression,” independent of viewpoint, is particularly offensive. To cut the statute off where the Government urges is not to interpret the statute Congress enacted, but to fashion a new one. And once the “immoral or scandalous” bar is interpreted fairly, it must be invalidated… There are a great many immoral and scandalous ideas in the world (even more than there are swearwords), and the Lanham Act covers them all. It therefore violates the First Amendment.”

When asked for reaction to today’s ruling, a USPTO spokesperson told WTR: “We are currently reviewing the decision.” 

Writing for WTR in January, Finnegan partner Mark Sommers and associate Patrick Rodgers noted that the consequences of a striking of the scandalous/immoral mark ban would mean that – in addition to a great influx of vulgar marks on the Federal register – all that would remain of § 2(a) would be bans on deceptive marks, marks that falsely suggest a connection with or bring into disrepute specified categories, and primarily geographic indicators used in connection with wines or spirits. They also contended that further First Amendment challenges to other Lanham Act provisions could follow.

For now, while today’s decision will not come as a surprise to many in the trademark community, it is certainly notable – effectively invalidating a century-old provision of federal trademark law.

Trevor Little

Author | Editor

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Trevor Little