Supreme Court Holds Lanham Act’s Restriction on “Immoral or Scandalous Marks” Unconstitutional
Under Section 1502(a) of the Lanham Act, the Patent and Trademark Office (PTO) has consistently had the ability to deny trademark applications for marks that “consist of or comprise  immoral  or scandalous matter.” Today, in a rather interesting opinion, the Supreme Court determined that this prohibition violates the Free Speech Clause of the First Amendment.
Erik Brunetti sought federal registration of the trademark FUCT for his skate brand which he says stands for Friends U Can’t Trust. Since this mark sounds like the equivalent of the past participle form of a well-known word of profanity, the PTO denied registration. The examining attorney stated in his opinion that the mark was “highly offensive” and had “decidedly negative sexual connotations.”
In the majority opinion penned by Justice Kagan, the Supreme Court reaffirmed the decision in Matal v. Tam, that “if a trademark registration bar is viewpoint-based, it is unconstitutional. And second, the disparagement bar is viewpoint-based.”
What does “viewpoint-based” mean? It means that the government cannot discriminate against speech based on the ideas or opinions it conveys. To illustrate this, Kagan listed examples of the PTO’s approved marks and contrasted them with similar rejected marks. For example, the PTO approved D.A.R.E TO RESIST DRUGS AND VIOLENCE but, rejected BONG HITS 4 JESUS. Both marks convey differing opinions on the use of drugs, but one was not an “accepted” view on the topic and was thus, denied registration.
Justice Alito, in his concurring opinion, left the door open for Congress to adopt a more “carefully focused” statute regarding vulgar terms in trademarks but as it is now, the Lanham act does indeed discriminate on the basis of viewpoint. He further states, “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.”
Chief Justice Roberts wrote separately, concurring in part and dissenting in part. He pointed out that Brunetti was not being “punished” per se for using the mark, he just couldn’t get the benefits of federal registration and therefor, no speech was actually being restricted. Justice Breyer wrote separately from the majority expressing a similar view that the statue still “leaves businesses free to use highly vulgar or obscene words provided that they are willing to forgo the benefits of registration.” He further points out that there might be an important government interest in preventing these words to be used in commerce where children will be exposed to public displays involving such words.
The ACLU and other similar organizations are considering this opinion to be a major victory for advocates of free speech. Justice Sotomayor is not convinced this will have a positive result though. Writing another separate opinion, she makes it clear that she thinks this decision will “beget unfortunate results.” Further, Sotomayor muses that there will be a “coming rush to register such trademarks and the Government [will be] immediate[ly] powerless to say no.”
About the Author
Thomas Maddrey is the founder and managing partner of Maddrey PLLC. Prior to attending law school, Tom was a commercial photographer, entrepreneur, and gallery owner. His work in both the arts and as a business owner has given him a unique perspective on the needs of owners and creatives, as well as an understanding of the obstacles they face.
Learn more about Thomas Maddrey HERE.