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Supreme Court Finds “Scandalous” Trademark Rule Unconstitutional



The U.S. Supreme Court has ruled that the U.S. Trademark Act’s section 2(a) provision precluding registration of “immoral” or “scandalous” trademarks violates the First Amendment of the U.S. Constitution. The ruling came in the case of Iancu v. Brunetti, an appeal from the U.S. Trademark Office’s refusal to register the trademark F.U.C.T. for a line of clothing marketed by Erik Brunetti.

In the wake of the 2017 Supreme Court decision in Matal v. Tam, finding that the “disparaging marks” provision of that same section violates the First Amendment, many people thought—rightly, as it turned out—that the Court that invalidated the interdict against disparaging marks would likely also find the ban on “dirty words” trademarks equally offensive to the First Amendment.

However, the U.S. Government, as well as several critics and commentators, contended that the Tam decision applies to trademarks that express a viewpoint, whereas the Brunetti refusal appears to have been based solely on content, regardless of viewpoint, and that this difference was sufficient for the Court to separately hear the Brunetti case and could yield a different result. Brunetti however maintained that inconsistent past grants and refusals of registration to immoral or scandalous marks show that the Trademark Office has indeed decided these matters based on perceived viewpoint and not solely on content, and that is how the Supreme Court ruled this week.

The majority opinion authored by Justice Kagan found that the ban on registering immoral or scandalous marks was viewpoint-based, not viewpoint neutral. “The PTO has refused to register marks communicating ‘immoral’ or ‘scandalous’ views about (among other things) drug use, religion, and terrorism,” wrote the majority. “But all the while, it has approved registration of marks expressing more accepted views on the same topics. … The Government’s idea, abstractly phrased, is to narrow the statutory bar to ‘marks that are offensive [or] shocking to a substantial segment of the public because of their mode of expression, independent of any views that they may express.’” But at oral argument, the majority observed, the Government conceded: “[I]f you just looked at the words like ‘shocking’ and ‘offensive’ on their face and gave them their ordinary meanings[,] they could easily encompass material that was shocking [or offensive] because it expressed an outrageous point of view or a point of view that most members” of society reject.

Thus, we are not looking at a statute that objects to the registration of merely nasty words and offensive phrases, regardless of viewpoint. Rather, the use of such words and phrases is viewpoint. The Lanham Act “allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety. The 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. This facial viewpoint bias in the law results in viewpoint-discriminatory application.” And so the Court found the language of Section 2(a) unconstitutional.

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