On June 24, 2019, the United States Supreme Court struck down as unconstitutional the provision of the Federal Trademark Act (also known as the Lanham Act) which prohibits” immoral and scandalous” trademarks from obtaining federal registration in the USPTO.
The court reasoned the government’s refusal to register a trademark based on the views or messages that a brand name evokes is content-based regulation of speech, not a time, place or manner regulation, and otherwise violates the First Amendment unless it passes strict scrutiny.
The full opinion of Iancu v. Brunetti is published below.
The Opinion abstract summarizes the decision as follows:
Respondent Erik Brunetti sought federal registration of the trademark FUCT. The Patent and Trademark Office (PTO) denied his application under a provision of the Lanham Act that prohibits registration of trademarks that “[c]onsist[ ] of or comprise[ ] immoral[ ] or scandalous matter,” 15 U. S. C. §1052(a). Brunetti brought a First Amendment challenge to the “immoral or scandalous” bar in the Federal Circuit, which invalidated the provision.
Held: The Lanham Act’s prohibition on registration of “immoral[ ] or scandalous” trademarks violates the First Amendment.
In Matal v. Tam, this Court declared unconstitutional the Lanham Act’s ban on registering marks that “disparage” any “person[ ], living or dead.” §1052(a). A divided Court agreed on two propositions. First, if a trademark registration bar is viewpoint-based, it is unconstitutional. And second, the disparagement bar was viewpoint based.
The “immoral or scandalous” bar similarly discriminates on the basis of viewpoint and so collides with this Court’s First Amendment doctrine.
Expressive material is “immoral” when it is “inconsistent with rectitude, purity, or good morals”; “wicked”; or “vicious.” So the Lanham Act permits registration of marks that champion society’s sense of rectitude and morality, but not marks that denigrate those concepts. And material is “scandalous” when it “giv[es] offense to the conscience or moral feelings”; “excite[s] reprobation”; or “call[s] out condemnation.” So 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. The PTO has refused to register marks
communicating “immoral” or “scandalous” views about (among other things) drug use, religion, and terrorism. But all the while, it has approved registration of marks expressing more accepted views on the same topics.
The Government says the statute is susceptible of a limiting construction that would remove its viewpoint bias. The Government’s
idea is to narrow the statutory bar to “marks that are offensive [or] shocking[ ] because of their mode of expression, independent of any views that they may express,” which would mostly restrict the PTO to refusing marks that are lewd, sexually explicit, or profane. But this Court cannot accept the Government’s proposal, because the statute says something markedly different. The “immoral or scandalous” bar does not draw the line at lewd, sexually explicit, or profane marks. Nor does it refer only to marks whose “mode of expression,” independent of viewpoint, is particularly offensive. To cut the statute off where the Government urges is not to interpret the statute Congress enacted, but to fashion a new one. And once the “immoral or scandalous” bar is interpreted fairly, it must be invalidated.
Link to full opinion here (44 pages).
Trademark owners, entrepreneurs and technology startups seeking brand protection through the United States Patent and Trademark Office, and seeking trademark registration in the United States, may now have lower chances of refusals and more expansive registration rights under this ruling. Trademark due diligence and consultation with an experienced trademark attorney may help avoid potential conflicts or refusals in the USPTO before a trademark application is filed.
Author: David N. Sharifi, Esq. is a Los Angeles based intellectual property attorney and technology startup consultant with focuses in entertainment law, emerging technologies, trademark protection, and “the internet of things”. David was recognized as one of the Top 30 Most Influential Attorneys in Digital Media and E-Commerce Law by the Los Angeles Business Journal. Office: Ph: 310-751-0181; firstname.lastname@example.org.
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