After Iancu v. Brunetti, You Can Now Register Your Favorite “Immoral or Scandalous” Trademark

In its 2019 decision of Inacu v. Brunetti, the U.S. Supreme Court struck down a provision of the Lanham Act that barred registration of “immoral or scandalous” trademarks.^[1] The case arose after clothing designer Erik Brunetti attempted to register his trademark “FUCT” with the U.S. Patent and Trademark Office (PTO).^[2] The PTO denied registration, finding that the trademark was “immoral or scandalous” because it was “vulgar.”^[3] Brunetti then brought a facial challenge to the Lanham Act’s “immoral or scandalous” bar in the Court of Appeals for the Federal Circuit, arguing that the provision violated the First Amendment.^[4] The court invalidated the statute, and the Supreme Court granted cert.^[5]

The Lanham Act regulates registration of trademarks and contains provisions that prohibit the registration of certain marks.^[6] As the Court noted in Brunetti, registration of a trademark is not mandatory.^[7] The owner of an unregistered mark may still use it in commerce and enforce it against infringers.^[8] However, registration gives trademark owners important advantages.^[9] For example, registration constitutes prima facie evidence of a trademark’s validity.^[10]

Justice Kagan, writing for the majority in Brunetti, reasoned that the “immoral or scandalous” criterion violates the First Amendment because it discriminates based on viewpoint.^[11] She began her analysis by invoking the Court’s precedent that if a trademark bar is viewpoint-based—i.e. it disfavors certain ideas—it violates the First Amendment.^[12] In its recent 2017 decision, Matal v. Tam,^[13] the Court had invalidated another provision of the Lanham Act that banned registering marks that “disparage” any “person[ ], living or dead,” finding it similarly viewpoint-based.^[14]

Justice Kagan analyzed the “immoral or scandalous” bar as a unitary provision rather than considering the two adjectives separately, noting that this was how the PTO applied the provision.^[15] Using dictionary definitions of “immoral” and “scandalous,” she found that the statute differentiated between marks that align with conventional moral standards (registerable) and marks that are hostile to them (not registerable).^[16] According to the majority, this amounted to viewpoint bias.^[17] Justice Kagan next explained that the law’s viewpoint bias resulted in viewpoint-discriminatory application.^[18] She used examples from the PTO’s registration history to illustrate this point.^[19] The PTO rejected marks that expressed approval of drug use, such as “You Can’t Spell Healthcare Without THC” for pain-relief medication, while the PTO registered marks with sayings such as “Say No To Drugs—Reality Is The Best Trip In Life.”^[20]

The government argued that the statute was salvageable because it was subject to a limiting construction that would eliminate any viewpoint bias.^[21] The Court rejected this argument, reasoning that the avoidance canon applies only where ambiguity exists.^[22] Because the statute was unambiguous, any limiting construction would amount to rewriting it.^[23]

Justice Alito concurred in the judgment.^[24] His short opinion is notable in its recognition that, with viewpoint discrimination becoming increasingly prevalent in this country, it is especially important for the Court to reaffirm the importance of freedom of speech.^[25]

Chief Justice Roberts concurred in part and dissented in part.^[26] He agreed with the majority that the “immoral” portion of the provision was not subject to a limiting construction that would eliminate its viewpoint bias.^[27] However, he agreed with Sotomayor that the “scandalous” portion of the provision could be read narrowly to avoid the constitutional violation.^[28] He further noted that, in refusing to register “scandalous” marks, the government was not restricting speech in violation of the First Amendment, it was merely denying the owners certain benefits associated with federal trademark registration.^[29]

Justice Breyer concurred in part and dissented in part.^[30] Breyer disagreed with the majority’s rigid adherence to First Amendment categories such as “viewpoint discrimination.”^[31] Breyer proposed a more flexible approach that focused on the values underlying the First Amendment.^[32] Instead of categories being outcome-determinative, he suggested that courts ask instead whether the harm to First Amendment interests is disproportionate in light of the government’s relevant regulatory objectives.^[33] Under his proportionality analysis, Breyer concluded that the statute did not violate the First Amendment because the harm to trademark owners was de minimus compared to the government’s significant interest in limiting the registration of certain offensive marks.^[34]

Justice Sotomayor, joined by Justice Breyer, concurred in part and dissented in part.^[35] She agreed with the majority that there was no reasonable way to read “immoral” to be viewpoint-neutral but disagreed with the majority with regard to the word “scandalous.”^[36] In her view, “scandalous” could be reasonably read to cover only those marks that are obscene, vulgar, or profane—marks that are offensive because of the mode of expression, apart from any particular message or idea.^[37] According to Sotomayor, interpreting the “scandalous” portion of the statute as a bar on offensive modes of expression would save it from unconstitutionality.^[38]

After Brunetti, the PTO can no longer reject marks on the ground that they are “immoral or scandalous.”^[39] The Court’s decision has thus broadened the types of marks permitted for registration.^[40] It will be interesting to see if there is a flood of new applications to the PTO as individuals and businesses try to be first in line to register their favorite expletives.^[41]

The majority opinion in Brunetti emphasized that it was interpreting the statute as written by Congress, and that it did not have the power to fashion a new one.^[42] In doing so, the Court essentially invited Congress to write a new statute that limits the prohibition to those marks that are “lewd, sexually explicit, or profane” regardless of viewpoint.^[43] In light of the Court’s suggestion, it seems likely that Congress will eventually enact a narrower statute that focuses more on the mode of a trademark’s expression rather than the underlying views conveyed by that trademark.