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Supreme Court Strikes Down Ban on Scandalous Trademarks


July 29, 2019
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The U.S. Supreme Court Has Struck Down the Lanham Act’s Ban on the Federal Registration of Immoral or Scandalous Trademarks in Iancu v Brunetti (2019)

The U.S. Supreme Court has struck down the Lanham Act’s prohibition on the federal registration of “immoral” or “scandalous” trademarks. By a split decision of 6-3, the justices held in Iancu v. Brunetti, 588 U. S. ____ (2019), that the ban violates the First Amendment.

Supreme Court Strikes Down Ban on Scandalous Trademarks

Facts 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 federal ban on registering disparaging trademarks violated the First Amendment to the U.S. Constitution. 

A majority of the Federal Circuit had 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.”

Majority Decision in Iancu v. Brunetti

A majority of the Supreme Court affirmed. It held that the Lanham Act’s prohibition on the registration of “immoral[ ] or scandalous” trademarks violates the First Amendment.

Citing its decision in Matal v. Tam, the majority similarly concluded that the “immoral or scandalous” bar discriminates on the basis of viewpoint and, therefore, runs afoul of the Constitution. “It 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,” Justice Elena Kagan wrote on behalf of the majority. “This facial viewpoint bias in the law results in viewpoint discriminatory application.”

In reaching its decision, the majority rejected the government’s representation that it would interpret the provision of the Lanham Act more narrowly going forward. “To cut the statute off where the Government urges is not to interpret the statute Congress enacted, but to fashion a new one,” Justice Kagan wrote.

The majority also rejected the contention that the provision is salvageable by virtue of its constitutionally permissible applications, such as its applications to lewd, sexually explicit, or profane marks. [I]n any event, the ‘immoral or scandalous’ bar is substantially overbroad,” Justice Kagan wrote. “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.”

Dissents in Iancu v. Brunetti

While all of the justices agreed that the ban on “immoral” trademarks violated the First Amendment right to free expression, Justices Sonia Sotomayor, Stephen Breyer, and John Roberts penned dissents arguing that the bar on “scandalous” trademarks should have been upheld.

Justice Sotomayor argued that the majority decision forces the USPTO to register “the most vulgar, profane or obscene words and images imaginable.” Meanwhile, Justice Stephen Breyer expressed concern about the potential effect of such marks. “Just think about how you might react if you saw someone wearing a t-shirt or using a product emblazoned with an odious racial epithet,” he wrote.

Several justices also suggested that Congress should step in and enact a new, more narrowly-tailored trademark law that would not discriminate on the basis of viewpoint. Both Justice Breyer and Chief Justice John Roberts argued that the USPTO should be able to ban the registration of highly vulgar or obscene words.

Key Takeaway

The Supreme Court’s decision in Iancu v. Brunetti opens the door to registering trademarks that were previously banned. To discuss how the decision may impact you or your business, we encourage you to contact the attorneys of the Scarinci Hollenbeck Intellectual Property Group.

If you have any questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, David Einhorn, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.