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Jun 26, 2019

Supreme Court Lifts Ban on “Scandalous” or “Immoral” Trademarks

On June 24, 2019, the U.S. Supreme Court ruled in favor (6-3) that the section of the Lanham Act prohibiting registration of trademarks that are “immoral” or “scandalous” is unconstitutional (see Iancu vs. Brunetti). As a result, the FUCT mark, and other arguably scandalous terms, will be registered.

Associate Justice Kagan delivered the majority opinion, joined by Justices Alito, Ginsburg, Gorsuch, Kavanaugh and Thomas. This ruling is thought to be a victory for proponents of free speech under the First Amendment. The case was brought by Erik Brunetti, founder of Los Angeles streetwear label FUCT, after the U.S. Patent and Trademark Office (“USPTO”) refused registration for that mark under that section of the Lanham Act. The Court’s decision is also consistent with its prior ruling in another case in 2017, Matal v. Tam, where it found that the statutory ban to register “disparaging” marks was also unconstitutional.

Justice Alito, concurring, stated: “Viewpoint discrimination is poison to a free society. But in many countries with constitutions or legal traditions that claim to protect freedom of speech, serious viewpoint discrimination is now tolerated, and such discrimination has become increasingly prevalent in this country. 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.”

However, most pundits fear this will provide a rush to apply for federal trademark from other taboo monikers. Justice Sotomayor, concurring in part and dissenting in part, wrote: “The Court’s decision today will beget unfortunate results. With the Lanham Act’s scandalous-marks provision, 15 U.S.C. Sec. 1052(a), struck down as unconstitutional viewpoint discrimination, the Government will have no statutory basis to refuse (and thus no choice but to begin) registering marks containing the most vulgar, profane, or obscene words and images imaginable.”

Justice Breyer, concurring in part and dissenting in part, was fearful the ruling could lead to violence when he wrote: “These attention-grabbing words, though financially valuable to some businesses that seek to attract interest in their products, threaten to distract consumers and disrupt commerce. And they may lead to the creation of public spaces that many will find repellant, perhaps on occasion creating the risk of verbal altercations or even physical confrontations. (Just think about how you might react if you saw someone wearing a t-shirt or using a product emblazoned with an odious racial epithet.)”

This revolutionary ruling leaves the USPTO without the power to refuse registration for trademarks that are immoral or scandalous, and it is expected to now process many applications which were filed for such marks and which have been suspended until the Court’s decision in this case. That is, we may soon see trademark registrations issued for terms and design images which many deem immoral, offensive and/or vulgar. 

That said, and as noted in Justice Alito’s concurring opinion, the majority’s ruling “does not prevent Congress from adopting a more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas.” It will be interesting to see what steps, if any, Congress may take to ban registration of a narrower class of trademarks that are profane, sexually explicit or lewd.

Brutzkus Gubner will continue to follow this ruling and provide updates when necessary.

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