United States Supreme Court Rules That Lanham Act’s Prohibition on Registration of Immoral or Scandalous Trademarks Violates the First Amendment

On Monday, June 24, 2019, the United States Supreme Court issued a decision in Iancu v. Brunetti, 588 U.S. ___ (2019), holding that the Lanham Act’s bar on registration of immoral or scandalous trademarks violates the First Amendment. At issue in the case is the trademark FUCT, pronounced as four letters, which is the clothing brand founded by Erik Brunetti. Justice Elena Kagan, writing for the majority, wrote that the Lanham Act’s bar on immoral or scandalous trademarks is viewpoint-based discrimination in violation of the First Amendment. 

Brunetti was denied registration of his trademark by the United States Patent & Trademark Office (“PTO”) under the Lanham Act’s bar on immoral or scandalous trademarks. Upon review of Brunetti’s application for registration, the PTO’s Trademark Trial and Appeal Board found that “[w]hether one considers [the mark] as a sexual term, or finds that [Brunetti] has used [the mark] in the context of extreme misogyny, nihilism or violence, we have no question but that [the term] is extremely offensive.” App. to Pet. for Cert. 59a, 65a. Brunetti challenged the PTO’s rejection and the Court of Appeals for the Federal Circuit found that the Lanham Act’s prohibition on immoral or scandalous trademarks violated the First Amendment.

Justice Kagan compared Brunetti’s case to Matal v. Tam, 582 U.S. ___ (2017), where the Court held that the Lanham Act’s bar on registration of disparaging trademarks violated the First Amendment in light of viewpoint-based discrimination. Comparing Tam to Brunetti in order to draw similarities, Justice Kagan pointed out that, in Brunetti, the Government conceded that any criteria for federal trademark registration must be viewpoint-neutral in order to withstand the scrutiny of Free Speech Clause review. Justice Kagan then applied dictionary definitions used by the PTO to “immoral” and “scandalous” to read the Lanham Act’s bar on registration of immoral or scandalous trademarks as, on its face, “distinguish[ing] 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.” Brunetti, 588 U.S. ___ (2019).

Continuing on, Justice Kagan reasoned that because the statute, on its face, is viewpoint biased, the law results in viewpoint-based discrimination in application. Justice Kagan discussed a few examples where the PTO refused to register trademarks expressing “immoral” or “scandalous” views about drug use, religion, and terrorism, but approved registration of other trademarks expressing more widely accepted views on the exact same topics. The Government argued that, under the First Amendment overbreadth doctrine, the immoral or scandalous provision should be upheld against facial attack because the unconstitutional applications of the provision are not “substantial” in comparison to the “the statute’s plainly legitimate sweep.” United States v. Stevens, 559 U.S. 460, 473 (2010). Justice Kagan pointed out that the Court has never applied such an analysis to any viewpoint-discriminatory law. In Tam, the Court’s finding of viewpoint bias concluded the matter. In Brunetti, the Court found the prohibition on registration of immoral or scandalous trademarks to be substantially overbroad and, thus, in violation of the First Amendment.

Additional Reading

Supreme Court sides with ‘subversive’ clothing designer in First Amendment case, The Washington Post (June 24, 2019)

Iancu v. Brunetti, 588 U.S. ___ (2019)