Iancu v. Brunetti: U.S. Supreme Court Holds the Lanham Act’s Ban on Registration of “Immoral or Scandalous” Trademarks Violates the First Amendment

By Tammy Dunn and Keelin Hargadon

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In Iancu v. Brunetti, 588 U.S. __ (2019), the Supreme Court affirmed the Federal Circuit’s decision invalidating the statutory bar on registration for marks considered “immoral or scandalous.”  The Supreme Court’s reasoning was similar to its analysis in Matal v. Tam, 582 U.S. ___ (2017), in which the Supreme Court declared unconstitutional the Lanham Act’s ban on registering marks that “disparage” any “person[s], living or dead.”

Turning to the facts in the Brunetti decision, Erik Brunetti founded a clothing line that uses the trademark FUCT.  According to Brunetti, FUCT is pronounced as four letters i.e., F-U-C-T.  The United States Patent & Trademark Office disagreed and refused registration of FUCT under 15 U.S.C. § 1052(a) of the Lanham Act for being “immoral or scandalous,” pointing out that the brand name could be considered “the equivalent of [the] past participle form of a well-known word of profanity.”  Brunetti appealed the decision to the Trademark Trial and Appeal Board (TTAB), which affirmed the Examiner’s refusal for registration.

Subsequently, Brunetti appealed to the United States Court of Appeals for the Federal Circuit and challenged the statute’s constitutionality as violating the right to free speech under the First Amendment.  The Federal Circuit agreed with Brunetti’s challenge and invalidated the statute as unconstitutional.  As is typical when a lower court declares a statute unconstitutional, the Supreme Court of the United States granted certiorari to review the Federal Circuit’s decision.

As in the Tam decision, the Supreme Court again focused on whether or not this particular portion of the statute discriminates based upon viewpoint to determine the constitutionality of this trademark registration bar.  Finding that the statute discriminates as such, the Supreme Court states:

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.  Op. at 6.

Because viewpoint discrimination by a statute is unconstitutional, the Supreme Court held that the Lanham Act’s prohibition on registration of “immoral or scandalous” marks is also unconstitutional.

In its attempts to save the statute, the Government argued that the statute is susceptible to a limiting construction that would remove viewpoint bias.  Essentially, the Government argued that the trademark registration bar could be narrowed to “marks that are offensive [or] shocking to a substantial segment of the public because of their mode of expression, independent of any views that they may express.” Op. at 8. The Government further explained that the reinterpretation would mostly result in the USPTO only refusing marks that are “vulgar”, i.e., “lewd,” “sexually explicit or profane.”  Op. at 9.  The Supreme Court was not persuaded.  According to the Supreme Court, the Government’s interpretations ignored the plain language of the statute and the Supreme Court “will not rewrite a law to conform it to constitutional requirements.”  Op. at 9, quoting United States v. Stevens, 559 U.S. 460, 481 (2010).

Although all Justices at least partially concurred with the opinion, some Justices did express discomfort with the idea of allowing federal trademark registration of highly offensive terms, and suggested either that the statute could be interpreted more narrowly or that Congress adopt a more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas.

Practical Ramifications:

So what does this decision mean for trademark owners?  At least for now, trademark owners who have feared refusal of registration due to the “immoral and scandalous” bar may be able to obtain federal registration for a time.  This could all change again, however, if Congress passes a revised version of the trademark registration bar that is more narrowly tailored and comports with constitutional requirements.

For more questions on how this decision could affect your trademark portfolio objectives, feel free to contact Tammy Dunn (dunn@oshaliang.com) and Keelin Hargadon (hargadon@oshaliang.com) of the Osha Liang Trademark Group.