INSIGHT: Supreme Court's Brunetti Ruling: Scandalous and Immoral Marks Are Fair Game

July 1, 2019

Amanda B. Slade, John L. Strand

(As published by Bloomberg)

OVERVIEW: The U.S. Supreme Court struck down the Lanham Act’s bar on registering immoral or scandalous marks on June 24, allowing federal trademark protection for “immoral and scandalous” marks such as FUCT. Wolf Greenfield attorneys examine key points and the justices’ viewpoints.

The U.S. Supreme Court’s June 24 decision in Iancu v. Brunetti provides a green light for immoral or scandalous marks to receive federal trademark protection.

Marks such as FUCT, KO KANE, and BONG HITS 4 JESUS will now appear on the Trademark Register alongside esteemed household brand names.

While this may be welcome news for some brand owners, freedom of speech may come at a cost. Justice Stephen G. Breyer warned that registration of “immoral and scandalous” marks may increase these marks’ use.

In turn, this “may lead to the creation of public spaces that many will find repellent, perhaps on occasion creating the risk of verbal altercations or even physical confrontations.” Time will tell whether these potential ripple effects come to fruition.

Tam and Brunetti
Section 2(a) of the Lanham Act provides that the Patent and Trademark Office (PTO) may refuse to register a trademark that “[c]onsists of or comprises immoral … or scandalous matter.” 15 U.S.C. § 1052(a). In a decision that was unanimous in part and 6-3 in part, the court ruled that this provision is an unconstitutional restriction of free speech.

The decision largely mirrored the court’s recent reasoning in Matal v. Tam, in which it held the Lanham Act’s disparagement provision violated the First Amendment. In Tam, the lead singer of The Slants sought registration of the band’s name.

The PTO rejected the application, citing the disparagement clause and the fact that “slants” is a derogatory or offensive term for Asian people. The court unanimously agreed the disparagement clause was invalid, finding, “It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

Turning to the present case, in 2011, Erik Brunetti filed a trademark application for FUCT for athletic, infant, and children’s apparel. The PTO rejected Brunetti’s application under Section 2(a), alleging that FUCT is “scandalous because it is disparaging and a total vulgar.” U.S. Trademark Application Serial No. 85/310,960 (filed May 3, 2011). The Trademark Trial and Appeal Board affirmed the refusal to register, prompting Brunetti’s appeal to the Federal Circuit.

Things took a positive turn for Brunetti at the Federal Circuit. Although the court agreed that FUCT was a scandalous mark, following Tam, it held the immoral or scandalous marks provision “impermissibly discriminates based on content in violation of the First Amendment.” In re Brunetti, 877 F.3d 1330, 1341 (Fed. Cir. 2017). The government appealed to the Supreme Court. 

Provision Discriminates Based on Viewpoint

As many anticipated, a majority of the justices concluded that the immoral or scandalous marks provision violates the First Amendment. Justice Elena Kagan authored the majority opinion. Justices Ruth Bader Ginsburg, Neil M. Gorsuch, Brett M. Kavanaugh, and Clarence Thomas joined the opinion in full, while Justice Samuel A. Alito filed a concurring opinion, and Chief Justice John G. Roberts and Justices Breyer and Sonia Sotomayor concurred in part and dissented in part.

The court held that, like the disparagement provision, the immoral or scandalous marks provision impermissibly discriminates on the basis of viewpoint, for “[i]t too disfavors certain ideas.” Justice Kagan wrote that the provision “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. The statute favors the former, and disfavors the latter.” Because the provision disfavors “ideas that offend,” it discriminates “based on viewpoint in violation of the First Amendment.”

Justice Alito wrote a strongly worded concurring opinion in which he cautioned that “free speech is under attack” in today’s society. He wrote, “Viewpoint discrimination is poison to a free society ... [I]t is especially important for this Court to remain firm on the principle that the First Amendment does not tolerate viewpoint discrimination.”

Nevertheless, Justice Alito was troubled by the registration of a vulgar term and invited Congress to adopt “a more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas.” 

Roberts, Breyer, Sotomayor Disagree in Part
Chief Justice Roberts and Justices Breyer and Sotomayor disagreed with portions of the majority decision. They criticized the majority’s treatment of the “immoral” and “scandalous” limitations as a unitary bar on registration. They wrote that the “scandalous” portion of the provision is susceptible of a narrowing construction, where it would “bar only marks that offend because of their mode of expression” (i.e., marks that are obscene, vulgar, or profane), so as to eliminate the provision’s viewpoint bias.

Justice Breyer also repeated his disdain for the court’s First Amendment framework altogether. Rather than strictly adhere to the rigid “viewpoint discrimination,” “content discrimination,” “commercial speech,” and “government speech” categories, he advocated for an alternative test. In line with past concurrences, he would ask “whether the regulation at issue works speech-related harm that is out of proportion to its justifications.”

Here, he noted that businesses are “free to use highly vulgar or obscene words on their products,” even without a federal registration. In terms of the justification, he recognized the government has at least a “reasonable interest in ensuring that it is not involved in promoting highly vulgar or obscene speech, and that it will not be associated with such speech.” Accordingly, Justice Breyer would have concluded that the “scandalous” portion of the provision does not violate the First Amendment.