Type: Law Bulletins
Date: 06/27/2019

U.S. Supreme Court Strikes Down a Longstanding U.S. Ban on "Immoral" and "Scandalous" Trademarks

The U.S. government no longer has the authority to bar federal trademark registration for words or symbols that it determines to be immoral, obscene, vulgar or profane. On Monday, June 24, 2019, the U.S. Supreme Court (the Court) struck down a longstanding federal prohibition on the registration of “immoral or scandalous” trademarks, holding that such a prohibition violates the First Amendment right to free expression.

By a vote of 6-3, the Court found in favor of Erik Brunetti, the founder of the clothing line brand FUCT. In 2011, Brunetti sought federal registration of the trademark FUCT. The U.S. Patent and Trademark Office (USPTO) denied his application under Section 1052(a) of the Lanham Act, which prohibits registration of trademarks that consist of or comprise “immoral[] or scandalous matter.” 15 U.S.C. § 1052(a). After the USPTO Trademark Trial and Appeal Board agreed with the USPTO’s decision, Brunetti brought the case to the U.S. Court of Appeals for the Federal Circuit, which found that the “immoral or scandalous” bar violated the First Amendment.

In its decision on Monday, the Court referenced its 2017 decision, Matal v. Tam, 582 U. S. ___ (2017). In Matal v. Tam, the Court invalidated the Lanham Act’s bar on registration of trademarks that “disparage[d]” a “person[], living or dead,” holding that the “disparaging” bar violated the First Amendment because it discriminated on the basis of viewpoint.

Justice Kagan delivered Monday’s opinion on behalf of the Court, making it clear that the 2017 decision served as precedent and that refusing to register a trademark because it might offend people was viewpoint discrimination. Justice Kagan stated that the prohibition of “immoral or scandalous” trademarks “infringes the First Amendment for the same reason: It too disfavors certain ideas.” The Court’s opinion states:

[T]he Lanham Act allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety. Put the [terms “immoral” and “scandalous”] together and 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. The statute favors the former, and disfavors the latter. “Love rules”? “Always be good”? Registration follows. “Hate rules”? “Always be cruel”? Not according to the Lanham Act’s “immoral or scandalous” bar.

While all nine justices agreed with Justice Kagan that the prohibition on “immoral” trademarks violated the First Amendment, three justices dissented by stating that the “scandalous” prohibition should have been upheld. The dissenting justices stated that the “scandalous” portion of the provision is susceptible to a narrowing construction, and that the term “scandalous” can be read more narrowly to bar only marks that offend because of their mode of expression (i.e., marks that are obscene, vulgar or profane), not because of the ideas that they convey.

The Court is empowered to narrowly interpret statutes so as to avoid striking them down as unconstitutional. However, Justice Kagan stated that such a narrow construction could not be applied to the “scandalous” provision:

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.

While the ban on all “immoral” and “scandalous” trademarks is now unconstitutional, the justices suggested in both the majority and dissenting opinions that the Court may uphold Congress’ enactment of a narrower prohibition on “modes of expression” that are obscene, vulgar or profane.  As Justice Alito wrote, “… [W]e are not legislators and cannot substitute a new statute for the one now in force.” Nonetheless, “Our decision does not prevent Congress from adopting a more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas.”

Only time will tell whether Congress will work to implement a narrower prohibition against registration of obscene, vulgar or profane marks. Until then, it will be interesting to see how the Court’s decision affects the landscape of new trademark filings.

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