In late June, the Supreme Court struck down the part of federal trademark law that prohibited the registration of “immoral or scandalous” trademarks. The case was called Iancu v. Brunetti, and it was a follow-up to the court’s Matal v. Tam ruling two years ago. In Tam, the justices unanimously ruled that the Lanham Act’s ban on disparaging trademarks was a violation of free speech rights under the First Amendment. In Brunetti, the justices used the First Amendment to strike down another ban: the one on “immoral or scandalous” trademarks.
Mr. Erik Brunetti sought to register the word mark “FUCT,” in connection with clothing. The examining attorney at the United States Patent and Trademark Office (“USPTO”) refused registration under Section 2(a) of the Lanham Act, on the basis that the mark was vulgar, and therefore “immoral” or “scandalous.” The Trademark Trial and Appeal Board (“TTAB”) upheld the examining attorney’s decision on appeal. Mr. Brunetti then appealed the TTAB’s decision to the Federal Circuit. The Federal Circuit requested additional briefing from the parties following the Supreme Court’s decision in Matal v. Tam, 137 S.Ct. 1744 (2017), which held that Section 2(a)’s prohibition on registering “disparaging” trademarks is unconstitutional under the First Amendment. In December 2017, the United States Court of Appeals for the Federal Circuit issued a unanimous ruling declaring unconstitutional Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), which prohibits the registration of “immoral” or “scandalous” trademarks.
The issue came down to a key part of First Amendment law: is the regulation in question viewpoint-neutral? The First Amendment protects speech despite the viewpoint it expresses, so the government (in this case, the USPTO) cannot pick winners and losers because it likes some views better than others.
Writing for a 6-3 majority, Justice Elena Kagan concluded that is exactly what the USPTO had been doing in applying the “immoral or scandalous” ban codified in the Lanham Act. Kagan examined the USPTO’s treatment of trademarks related to drugs: trademark examiners rejected “YOU CAN’T SPELL HEALTHCARE WITHOUT THC,” “MARIJUANA COLA,” and “KO KANE.” But they approved “D.A.R.E. TO RESIST DRUGS AND VIOLENCE” and “SAY NO TO DRUGS—REALITY IS THE BEST TRIP IN LIFE.” According to the Court, those decisions are clearly viewpoint-based and, therefore, unconstitutional, even if they are “understandable” because of the trademarks’ potential to offend.
Justice Sotomayor in her dissenting opinion—anticipate a rush to register trademarks containing arguably vulgar, profane, or obscene words and images, with the PTO now powerless to say no. She’s right! This ruling means that trademark registrations are open to any type of language. It’s the Wild West in the dusty, old town of TrademarkVille. What do you want to say about your product? Does your product’s branding have a viewpoint? Registrations at the USPTO now must be open to all, even those marks that will offend. Intellectual Property law seemed to be one area that was stuck in the past, even as technology keeps changing at a rapid pace. Not anymore. Bring on all the words that you may need to cover your ears to hear. They’re registrable.