201-896-4100

Supreme Court to Determine If Scandalous Trademark Ban Is Unconstitutional


February 1, 2019
« Next Previous »

SCOTUS Recently Added Iancu v. Brunetti, a Potential Blockbuster IP Case to its Docket, Which Involves the Federal Ban on Registering “Scandalous” Trademarks…

The U.S. Supreme Court continues to add intellectual property cases to its docket. The latest potential blockbuster is Iancu v. Brunetti, which involves the federal ban on registering  “scandalous” and “immoral” trademarks.

Facts of Iancu v. Brunetti

The dispute arises from the USPTO’s refusal of Erik Brunetti’s application to register the mark “FUCT” for his clothing line. A 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.”  Specifically the examiner found that “FUCT” is the past tense of “F-CK”, and “is scandalous because it is discouraging and… total[ly] vulgar.”

The Trademark Trial and Appeal Board affirmed the denial, agreeing that “a substantial composite of the general public would find this designation vulgar.” It also concluded that “the Trademark Trial and Appeal Board is not the appropriate forum for re-evaluating the impacts of any evolving First Amendment jurisprudence within Article III courts upon determinations under Section 2(a) of the Lanham Act.”

On appeal, the Federal Circuit asked the parties to submit briefs explaining how the constitutionality of the scandalousness provision should be resolved in light of the Supreme Court’s decision in Matal v. Tam. In that case, the Court struck down the federal ban on registering disparaging trademarks, holding that it violated the First Amendment to the U.S. Constitution. “We now hold that this provision violates the Free Speech Clause of the First Amendment,” Justice Samuel Alito wrote. “It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

While the USPTO argued that the ban on scandalous marks is distinct because it is not based on the speaker’s viewpoint, the Federal Circuit ultimately concluded that it also violated the First Amendment. “[W]e conclude the provision impermissibly discriminates based on content in violation of the First Amendment,” the Federal Circuit’s opinion states.

Notably, the Federal Circuit did agree that the “trademark at issue [‘FUCT’] is vulgar.” Nonetheless, it concluded 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 explained. “The First Amendment, however, protects private expression, even private expression which is offensive to a substantial composite of the general public.”

Arguments Raised in Iancu v. Brunetti

On January 4, the U.S. Supreme Court agreed to review the Federal Circuit’s decision. The justices will specifically 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.”

The USPTO argues that the Federal Circuit erred in holding that the scandalous-marks provision is unconstitutional. “The scandalous-marks provision does not prohibit any speech, proscribe any conduct, or restrict the use of any trademark. Nor does it restrict a mark owner’s common-law trademark protections,” the government argued in its petition for certiorari. “Rather, it simply directs the USPTO to refuse, on a viewpoint-neutral basis, to provide the benefits of federal registration to scandalous marks.”

In response, Brunetti argues that determining which trademarks are scandalous is not viewpoint neutral. “In short, the Scandalous Clause is not a content-neutral rule that rejects all profanity, excretory and sexual content,” his brief argues. “Instead, the government is selectively approving or refusing profanity, excretory and sexual content based upon the level of perceived offensiveness.” In support, Brunetti notes that the government is often inconsistent in determining what marks qualify as scandalous. “Raising babies is sweet, making babies is disgusting. Kissing is fine, sex is dirty. Feminism is good, misogyny is bad. The word PENIS is allowed, an outline of a penis is not,” argues Brunetti.

The Court has not yet scheduled oral arguments in the case. A decision is expected by the end of the term in June. The attorneys of the Scarinci Hollenbeck Intellectual Property Group will continue to track its process and provide updates as they become available.

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.