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Supreme Court Debates Whether to Strike Down Scandalous Trademark Ban


May 7, 2019
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SCOTUS Recently Heard Oral Arguments in Iancu v. Brunetti, a Case Centering Around the USPTO’s Refusal to Register a Scandalous Trademark

The U.S. Supreme Court recently heard oral arguments in Iancu v. Brunetti, which centers on the U.S. Patent and Trademark Office’s refusal to register the mark “FUCT” under the statutory ban on immoral or scandalous trademarks. In a remarkable feat, the justices were able to do so without once uttering a curse word. As Justice Breyer noted, “most people know what words we’re talking about.”

While we must await the Court’s final decision, it appears that at least some of the justices are willing to rule that the federal ban on registering  “scandalous” and “immoral” trademarks is unconstitutional. However, given that some justices appeared wary of giving all profane terms trademark protection, the case is still too close to call.

Brief Summary of Iancu v. Brunetti

In 2011, Erik Brunetti sought to register the mark “FUCT” for his clothing line but was denied by the USPTO. In denying the application, the Trademark Examining Attorney relied on Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), which provides in pertinent part that a trademark shall be refused registration if it “[c]onsists of or comprises immoral…or scandalous matter.” A mark is considered scandalous or immoral if a “substantial composite of the general public” would find the mark “shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation.”

While the Trademark Trial and Appeal Board affirmed the denial, the Federal Circuit Court of Appeals reversed. Its decision relied heavily on the Supreme Court’s decision in Matal v. Tam, in which the Court held that the separate federal ban on registering disparaging trademarks violated the First Amendment to the U.S. Constitution.

The Federal Circuit held that the “government has offered no substantial government interest for policing offensive speech” in the context of its trademark registration program. “There are words and images that we do not wish to be confronted with, not as art, nor in the marketplace,” the court acknowledged. “The First Amendment, however, protects private expression, even private expression which is offensive to a substantial composite of the general public.”

Oral Arguments in Iancu v. Brunetti

On appeal, the justices agreed to consider the following question: “Whether Section 2(a) of the Lanham Act’s prohibition on the federal registration of ‘immoral’ or ‘scandalous’ marks is facially invalid under the free speech clause of the First Amendment.”

During oral arguments, counsel for the USPTO argued that the Federal Circuit erred in holding that the scandalous-marks provision is unconstitutional. In support, it maintained that the trademark law is “not a restriction on speech, but a valid condition on participation in a federal program.”

Justice Gorsuch appeared to buy into the argument. “Why can’t the people choose to withhold the benefit on the basis that there are certain words that are profane and that we, as a matter of civility in our culture, would like to see less of rather than more,” he said. “You’re free to use them,” he added.

Justice Sotomayor joined that line of questioning. “Let’s deal with the basic question: Why can’t the government say, ‘No, we’re not going to give you space on our public registry for words that we find are not acceptable’?” she said. “We don’t want vulgar, profane, sexually explicit or other words” as registered trademarks.

Meanwhile, Brunetti’s counsel asserted that Section 2(a) is “so incredibly broad. … There is a substantial amount of speech that is improperly refused under this provision.” He also emphasized that the USPTO has a long history of registering some profane or sexually themed marks but not others. In support, Brunetti’s attorney referenced a chart submitted to the Court that highlights the USPTO’s inconsistent treatment of words in George Carlin’s Seven Filthy Words.

Citing the Court’s decision in Tam, Justice Ginsburg questioned how the USPTO plans to determine whether the general public would find a mark shocking or offensive. “If you were to take a composite of, say, 20-year-olds, do you think that … they would find it shocking?” Justice Ginsburg said. “Suppose in the niche market where these goods are aimed, the word is mainstream.”

Justice Ginsburg was joined by several other justices in expressing skepticism that the USPTO was revising its approach in the wake of Tam by more narrowly interpreting Section 2(a). “[W]hat are we supposed to be doing here? . . . [A]re we supposed to be looking just at your commitments as to what you’re doing going forward?”  Justice Elena Kagan asked.

Several justices also raised concerns about the USPTO’s uneven enforcement of Section 2(a). As Justice Gorsuch noted, the chart provided by Brunetti showed “shocking numbers of ones granted and ones refused that . . . do look remarkably similar.”  He asked: “How is a reasonable citizen supposed to know?  What notice do they have about how the government’s going to treat their mark?”

Nonetheless, the Court also raised concerns about opening the floodgates to all offensive trademarks. “What is going to happen with whatever list of really dirty words still exist and all of their variations? There’s going to be a mad scramble by people to register these marks. And the ones who get there first are going to have exclusive” use of them as trademarks, Justice Samuel Alito stated. 

SCOTUS Decision Expected in June

The Supreme Court’s decision is expected by the end of the term in June. We will continue to track this case and will provide updates as they become available.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, David A. Einhorn, at 201-806-3364.