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Supreme Court Holds Bar on Immoral or Scandalous Trademarks Unconstitutional

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By: Anne M. Bolamperti and David G. Barker

The Supreme Court held Monday that the Lanham Act’s bar on “immoral or scandalous” trademarks is unconstitutional under the First Amendment.  Delivering the 6-3 opinion of the Court, Justice Kagan relied on the Court’s previous decision in Matal v. Tam (discussed here), which held that the Lanham Act’s ban on “disparaging” trademarks also was unconstitutional.

Respondent Erik Brunetti first sought federal registration of the trademark FUCT in connection with his urban clothing line.  Claiming use since December 1991, Brunetti’s line stands for “Friends U Can’t Trust,” but sounds like an expletive in acronym form.  The United States Patent and Trademark Office (“USPTO”) examining attorney and the Trademark Trial and Appeal Board both determined that Brunetti’s mark was “nothing but a vulgar, profane and scandalous slang,” and refused to register the mark.

Brunetti appealed, and the Federal Circuit held that the bar violated the First Amendment.  The Government appealed, and the Supreme Court affirmed, utilizing the framework employed in Matal.  If a trademark registration bar is viewpoint-based, it is unconstitutional under the First Amendment; the Government may not discriminate against speech based on the ideas or opinions it conveys. This discrimination allowed the Government to register marks it found positive but refuse to register marks it found derogatory.  The Court held that such discrimination was entirely viewpoint-based.  After reviewing multiple dictionary definitions, Justice Kagan stated that the bar favors ideas “aligned with conventional moral standards” but disfavors “those provoking offense and condemnation.”

The Government proposed narrowing the bar on immoral or scandalous marks based on the mode of expression, regardless of viewpoint, which would mainly prevent the USPTO from refusing to register sexually explicit or profane trademark applications.  The Court rejected the proposition, because a statute may only be narrowed when ambiguity exists.  Without any ambiguity here, the Court determined that narrowing the bar essentially would rewrite the statute.  Instead, the Court invalidated the bar in its entirety.

Chief Justice Roberts agreed that the “immoral” bar was unconstitutional but dissented regarding the “scandalous” bar.  He (along with Justice Sotomayor and Justice Breyer, who wrote separate opinions) would have held the “scandalous” provision susceptible to a narrowing construction: “it can be read more narrowly to bar only marks that offend because of their mode of expression—marks that are obscene, vulgar, or profane.”