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The Prohibition On Immoral and Scandalous Trademarks Violates First Amendment

Last week the U.S. Supreme Court issued its long awaited decision in Iancu v Brunetti   588 U.S. ____, 2019 USPQ2d 232043 (2019).  The Lanham Act Section 2(a) states that trademarks should be refused on the Principal Register if the trademark consists of immoral or scandalous matter. Erik Brunetti was seeking to register the mark, “FUCT” for various apparel items. The Examining Attorney refused to register the mark because it was the phonetic equivalent of a vulgar term.

Brunetti appealed to the Trademark Trial and Appeal Board (the “Board”), and it affirmed the refusal based on the mark, “FUCT” being prohibited under Section 2(a) of the Lanham Act for being immoral or scandalous. Brunetti then appealed to the U.S. Court of Appeals for the Federal Circuit (“CAFC”), and the Court reversed the Board’s holding. Since the CAFC invalidated Section 2(a) of the Lanham, the U.S. Supreme Court agreed to hear the case. Now the U.S. Supreme Court has ruled that Section 2(a) of the Lanham Act is unconstitutional because it violates the First Amendment.

Undoubtedly, the decision in Matal v. Tam influenced this ruling. See our blog post entitled, Two Significant Court Decisions Impacting USPTO Trademark Practice, for a more detailed analysis of the Tam case. In Tam, the U.S. Supreme Court held that Section 2(a) of the Lanham Act is unconstitutional under the Free Speech Clause of the First Amendment. Section 2(a) of the Trademark Act has been used to deny federal registration to trademarks that disparage or bring into contempt any persons living or dead. The applicant in Tam wanted to register the mark THE SLANTS for his Asian rock band. The Tam decision was a unanimous ruling holding the Disparagement Provision to discriminate based on viewpoint.

After the Tam decision, the USPTO had to remove certain cases from suspension (those refused on the Disparagement Provision) and reexamine the cases for other requirements. The Justices rendering the decisions of both cases (Tam & Brunetti) agree on the core principal that the government cannot discriminate against speech based on the ideas or opinions that the speech conveys. One of the Justices explained in Tam that the disparagement bar only allowed an applicant to register a mark if it conveyed a positive idea about a party, but not if it conveyed a derogatory message. In other words, the government cannot deny registration of a trademark based on views expressed by the mark.

In the case of Iancu v Brunetti, one of the questions the U.S. Supreme Court had to answer was what is the definition of immoral or scandalous. One of the standard definitions of immoral is “when it is inconsistent with rectitude, purity, or good morals; “wicked” or ” vicious”. The Justices set forth another definition for immoral, if “opposed to or violating morality”.  Scandalous is defined as “gives offense to the conscience or moral feelings” or “shocking to the sense of truth, decency, or propriety”; “offensive”; “disgraceful” or “disreputable”. The U.S. Supreme Court made clear in Tam, that a law that disfavors ideas that offend society is a violation of the First Amendment. The government’s argument for upholding Section 2(a) of the Lanham Act was that the statute prohibiting “immoral” or “scandalous” marks is viewpoint-nuetral. The U.S. Supreme Court did not agree. Justice Alito stated that “viewpoint discrimination is poison to a free society”. Justice Alito further declared that “at a time when free speech is under attack, it is especially important for this Court to remain firm on the principle that the First Amendment does not tolerate viewpoint discrimination.” Keep in mind that these are words from one of the conservative Justices.

It should be noted that the U.S. Supreme Court decision in Brunetti does not prevent Congress from writing a new law that is carefully tailored to bar trademarks that contain terms that play no part in the expression of ideas. However, the U.S. Supreme Court was not about to insert itself in the legislative role and re-write the statute. In the end, Eric Brunetti will have his trademark FUCT for apparel goods published for opposition and continue towards registration. If you have questions pertaining to trademark registration, please feel free to contact the firm for a courtesy consultation.