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Supreme Court Hears Oral Argument on “Immoral or Scandalous” Trademark Prohibition

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By: Anne M. Bolamperti and David G. Barker

Earlier this week, the Supreme Court of the United States heard oral argument in Iancu v. Brunetti (see previous discussion here) regarding the constitutionality of the portion of Lanham Act, Section 2(a) (15 U.S.C. § 1052(a)) that prohibits the United States Patent and Trademark Office’s registration of trademarks comprising “immoral . . . or scandalous matter.”  Previously, in June 2017, the Court unanimously affirmed in Matal v. Tam that the same statute’s bar on disparaging marks was unconstitutional under the First Amendment.

The PTO refused to register Erik Brunetti’s trademark application for “FUCT,” the acronym for “Friends U Can’t Trust.”  Malcolm L. Stewart argued for the government that the statute is view-point neutral and is “not a restriction on speech but a valid condition on participation in a federal program.”  Stewart argued that the Court should narrow the statute to prohibit “marks that are offensive, shocking to a substantial segment of the public because of their mode of expression.”

The Justices took issue with the PTO’s inconsistent application of the statute.  In response to Stewart’s position that the PTO, in practice, narrowly applies the statute, Justice Ginsburg asked how one could know that, when certain marks were refused registration both under the “scandalous” ground and under other grounds.  Justice Gorsuch, recognizing that the PTO has registered many other similar marks, asked, “How is a reasonable citizen supposed to know?  What notice do they have about how the government’s going to treat their mark?”

John R. Sommer, an attorney for Brunetti, countered that the government is asking the Court to go against the plain language of the statute and “validate a hypothetical statute not enacted.”  Sommer then argued that many Americans “think that gambling, drinking, eating some types of meat, eating meat at all is immoral,” and that there is no way to determine what is moral and what is immoral.  Chief Justice Roberts recognized Brunetti’s intended target, “young men who want to be rebels,” and questioned Sommer whether the government might have an interest in not being “associated with facilitating . . . vulgarity” beyond the targeted audience.  Sommer responded that this question of who the mark reaches is not a compelling government interest.  Chief Justice Roberts continued, stating that the whole point of trademark registration is to regulate content.

A ruling is expected in June, two years from the Tam decision.  Justices Gorsuch and Kavanaugh did not participate in deciding Tam, and both raised issues here about the statute’s language and the PTO’s inconsistent application of it.  Although Justice Alito hypothesized that “[t]here’s going to be a mad scramble by people to register these marks,” the Court’s emphasis on the overbroad language and the PTO’s inconsistent application indicates that the Court may well hold the “immoral . . . or scandalous” prohibition unconstitutional.