Supreme Court: Ban on Immoral/Scandalous Trademarks Held Unconstitutional

By: Irah H. Donner

In Iancu v. Brunetti,1 the U.S. Supreme Court ruled that a federal ban on the registration of immoral or scandalous trademarks like FUCT (pronounced as F-U-C-T) violated the First Amendment. By a 6–3 vote, the Court ruled that the ban was unconstitutional because it discriminated based on viewpoint. The ruling was expected based on the Court’s prior decision that held unconstitutional a similar ban on disparaging trademarks like “Redskins.”

Justice Elena Kagan, writing for the majority, noted that the statute was overbroad and was not limited specifically to lewd, sexually explicit or profane marks. Chief Justice John Roberts and Justices Stephen Breyer and Sonia Sotomayor issued partial dissents, all arguing that the ban on immoral marks was unconstitutional, but the ban on scandalous marks could have been maintained separately and limited to objectively vulgar marks.

The Court framed the issue as follows:

Today we consider a First Amendment challenge to a neighboring provision of the Act, prohibiting the registration of immoral or scandalous trademarks. We hold that this provision infringes the First Amendment for the same reason: It too disfavors certain ideas.

Respondent Erik Brunetti created a clothing line that employed the trademark FUCT as the brand name. The mark was intended to be pronounced as four letters, one after the other: F-U-C-T. The U.S. Patent and Trademark Office (PTO) manages the federal registration system for trademarks. Registration of a mark is not required, and the owner can still use an unregistered mark in commerce and enforce it against infringers. However, federal registration provides benefits such as prima facie evidence of the mark’s validity and constructive notice of the ownership of the trademark. A trademark is generally entitled to registration if it is used in commerce. However, the Lanham Act instructs the PTO to refuse registration of certain marks for a variety of reasons.

The Court explained that this case related to the Lanham Act’s prohibition on registering marks consisting of or comprising immoral or scandalous subject matter. The PTO determines whether a mark is immoral or scandalous by inquiring whether a substantial part of the general public would find the mark shocking, offensive, vulgar and the like.

Both the PTO examiner and the Trademark Trial and Appeal Board (Board) decided that Brunetti’s mark was immoral or scandalous. The examiner concluded that FUCT was vulgar and therefore not registerable. On appeal, the Board held the mark was highly offensive and vulgar, with a negative sexual suggestion. The Board concluded that the mark was extremely offensive. 

Brunetti then brought a facial challenge to the “immoral or scandalous” bar in the Court of Appeals for the Federal Circuit. On appeal to the Federal Circuit, the court ruled that the Lanham Act’s prohibition on registering immoral or scandalous marks violated the First Amendment. The Court observed that if a trademark registration ban is viewpoint based, it is unconstitutional.

All members of the Court agreed: “The government may not discriminate against speech based on the ideas or opinions it conveys.” The majority explained:

So the key question becomes: Is the “immoral or scandalous” criterion in the Lanham Act viewpoint-neutral or viewpoint-based? . . . And when is such material “scandalous”? . . . Put the pair of overlapping terms 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.

The majority then questioned: “How, then, can the Government claim that the ‘immoral or scandalous’ bar is viewpoint-neutral?” The majority explained that the “immoral or scandalous” bar was too general and the statute as written did not refuse registration of only lewd, sexually explicit or profane marks. The statute encompassed the universe of immoral or scandalous marks, including offensive or disreputable marks:

[T]he “immoral or scandalous” bar is substantially overbroad. 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.

Accordingly, the Court affirmed the judgment of the Federal Circuit Court of Appeals holding that the Lanham Act’s prohibition of registering scandalous or immoral marks is unconstitutional.

Why it matters:

The Iancu v. Brunetti decision is significant because it broadens the scope of registerable marks that will carry additional penalties for infringement. Businesses contemplating new marks will have to consider extending/broadening their due diligence to avoid encroaching on the brands of third parties. In addition, while the dissenters believed the scandalous part of the statute could have been saved to avoid vulgar marks, it appears all members of the Court agreed that had the statute been more narrowly focused on specific objectionable trademarks, the statute could have been constitutional. If numerous marks are filed for registrations that seem outrageous/scandalous, expect Congress to pass more specific legislation to update the Lanham Act. So, practitioners representing trademark filers might want to prepare for the possibility of retroactive application of a new statute banning a narrower and well-defined class of objectionable marks, and have backup marks/branding strategies to deploy if needed.

1 Iancu v. Brunetti, 139 S.Ct. 2294, 2019 WL 2570622 (2019).