Scandalous trademarks used to be grounds or trademark application refusal, however, 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.
Supreme Court Ruling on Immoral and Scandalous Trademarks: Iancu v. Brunetti Explained
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. This landmark decision in the case of Iancu v. Brunetti has significant implications for free speech and trademark law in the United States.
Background of Iancu v. Brunetti
The case began when Erik Brunetti sought federal registration of the trademark FUCT. The United States Patent and Trademark Office (USPTO) denied his application under a provision of the Lanham Act that prohibits the registration of trademarks that “[c]onsist[ ] of or comprise[ ] immoral[ ] or scandalous matter,” 15 U.S.C. §1052(a). Brunetti challenged this decision, arguing that the prohibition violated the First Amendment.
The Supreme Court’s Decision on Scandalous Trademarks
The Supreme Court ultimately sided with Brunetti, striking down the “immoral or scandalous trademarks” bar as unconstitutional. The court reasoned that the government’s refusal to register a trademark based on the views or messages that a brand name evokes is a content-based regulation of speech. Such regulation violates the First Amendment unless it passes strict scrutiny, which it did not in this case.
Opinion Abstract Summary: Scandalous Trademarks Rationale
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 trademark 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.
Key Points from the Court’s Reasoning
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Content-Based Regulation:
- The court determined that refusing to register trademarks based on their perceived immorality or scandalousness constitutes content-based regulation of speech. Content-based regulations are subject to strict scrutiny under the First Amendment.
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Strict Scrutiny:
- Under strict scrutiny, the government must show that the regulation serves a compelling state interest and is narrowly tailored to achieve that interest. The court found that the “immoral or scandalous” bar did not meet this standard.
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Free Speech Implications:
- The decision reaffirms the principle that the government cannot impose restrictions on speech based on its content, reinforcing the robust protections for free speech under the First Amendment.
Implications of Legality of Scandalous for Trademark Law
The ruling in Iancu v. Brunetti has several important implications for trademark law and the registration process:
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Broader Scope for Trademark Registration:
- Trademarks that were previously considered immoral or scandalous trademarks are now eligible for federal registration, expanding the scope of what can be trademarked.
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Potential Increase in Controversial Marks:
- The decision may lead to an increase in the number of controversial or provocative trademarks being registered, as applicants are no longer constrained by the “immoral or scandalous” prohibition.
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Guidance for Future Legislation:
- While the “immoral or scandalous” bar has been struck down, Congress may seek to craft new legislation that addresses specific concerns in a manner that complies with the First Amendment.
Consulting with a Trademark Expert
Navigating the implications of this Supreme Court ruling and understanding how it affects your ability to register a trademark can be complex. Consulting with an experienced trademark attorney is essential for ensuring that your trademarks are registered successfully and that your brand is protected.
For a confidential consultation to discuss the impact of the Iancu v. Brunetti decision on your trademark registration, contact David Nima Sharifi, Esq. today. Ensure your brand is protected with professional guidance and strategic legal support.
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” trademarks 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; david@latml.com.
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