Two years after the United States Supreme Court struck down the ban on disparaging trademarks, the Supreme Court has now struck down the Lanham Act’s similar ban on the registration of scandalous and immoral trademarks at the U.S. Patent and Trademark Office. Iancu v. Brunetti, No. 18-302, 588 U.S. _____ (2019). On June 24, 2019, Justice Kagan delivered the majority opinion of the Court, which voted 6-3 to strike the provision as an unconstitutional viewpoint-based restriction on speech that violates the First Amendment.The ruling comes in the wake of multiple legal challenges to the federal law known as the Lanham Act’s prohibitions on trademarks, including those litigated by The Slants and the Washington Redskins who sought to register their names as trademarks but were blocked by the Lanham Act’s disparagement clause.
Here, the case at issue was originally brought by Erik Brunetti, an artist and entrepreneur who tried to register “FUCT” as a trademark for his clothing line, which he argued in the litigation is pronounced as four letters (“F-U-C-T”) and stands for “Friends U Can’t Trust.” But as Justice Kagan noted, “you might read it differently.” And indeed, the U.S. Trademark Office did when it refused the registration as a “scandalous” or “immoral” mark.
The Trademark Trial and Appeal Board subsequently affirmed, describing the mark as “extremely offensive.” On Brunetti’s next appeal, however, the Federal Circuit overturned the prohibition as an unconstitutional governmental restriction on speech, setting the issue up for a final review before the Supreme Court.
Drawing on the precedent established in Matal v. Tam, 582 U.S. __ (2017), the majority opinion reasoned: A) if a trademark registration bar is viewpoint-based, it is unconstitutional, and B) the ban on immoral or scandalous marks is viewpoint-based. The ruling overturns a statutory provision that was enacted more than 70 years ago.
Chief Justice Roberts and Justices Breyer and Sotomayor dissented in part, agreeing with the Government’s position that the term “scandalous” (but not “immoral”) as used in the statute is susceptible to a narrowing construction that could prohibit only those marks that offend because of their mode of expression (e.g., profanity) without necessarily reaching the ideas or viewpoints they convey. This construction would result in a content-based but viewpoint-neutral restriction on speech.
Writing for the majority, Justice Kagan disagreed: “The statute as written does not draw the line at lewd, sexually explicit, or profane marks.” Justice Alito, meanwhile, urged Congress to adopt a more narrowly tailored statute in his concurrence, noting: “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. The particular mark in question in this case could be denied registration under such a statute.”
Unless or until Congress does so, we can expect a rapid rise in the number of trademark applications filed for profanities at the U.S. Trademark Office in the near future. But the more lasting impact of the Court’s decision will likely be its role in future First Amendment cases as the Court differentiates between viewpoint-neutral and viewpoint-based restrictions on speech, as well as the Court’s interpretation of what constitutes a governmental restriction on speech.