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Federal Ban on the Registration of Offensive Trademarks Ruled Unconstitutional

Blog Post Submitted by Anthony DeRosa

Last month (June, 24, 2019), the U.S. Supreme Court ruled in Iancu v. Brunetti that the federal ban on the registration of “immoral or scandalous” trademarks violated the First Amendment.  In a decision issued two years after the Court struck down a related ban on disparaging trademarks (see Matal v. Tam, 582 U.S. ____ (2017)), the justices held that the ban on “immoral or scandalous” material was also an unconstitutional form of discrimination against viewpoint.

The 6-3 decision went in favor of Erik Brunetti, the founder of a clothing brand called “Fuct.”  The U.S. Patent and Trademark Office (USPTO) had refused to register the brand name as a trademark on the grounds that the phonetically profane term was too scandalous.

Much of the Court’s analysis centered around its 2017 decision, in which the USPTO refused registration of the mark “The Slants” for an Asian-American band, a case that was closely followed because of its impact on the Washington Redskins’ trademarks.  “Two years ago, in Matal v. Tam, this court invalidated the Lanham Act’s bar on the registration of ‘disparaging’ trademarks,” Justice Kagan wrote.  “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.”

In the Matal case, the Court found that the disparagement bar violated the “bedrock First Amendment principle” and that the government cannot discriminate against “ideas that offend.”  The Court opined that the “immoral or scandalous” criterion in the Lanham Act similarly discriminates on the basis of viewpoint, and therefore “must also collide with our First Amendment doctrine.”  Justice Kagan wrote, “[t]he 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.”

The Government argued to the Court that the ban on scandalous marks could be saved by interpreting it narrowly to prohibit registration of lewd, sexually explicit, and profane marks.  The majority rejected this argument holding that the language of the Act did not support such a construction and “[t]o cut the statute off where the Government urges is not to interpret the statute Congress enacted, but to fashion a new one.”

In a footnote, however, the opinion made clear that the majority was saying “nothing at all” about the constitutionality of a future law merely to lewd, sexually explicit, and profane marks.  Justice Alito went further to state in his concurring opinion that “[o]ur 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.”

We will have to wait and see if Congress will act to amendment the Lanham Act to narrowly ban “vulgar trademarks.”  Until then, the USPTO may see an increase in applications for marks that once did not stand a chance at registration, irrespective of what viewpoint they express.

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