Case(s): Iancu v. Brunetti, 139 S. Ct. 2294 (2019)

Erik Brunetti sought federal registration of the trademark FUCT. The U.S. Patent and Trademark Office denied his application under a provision of the Lanham Act that prohibited registration of trademarks that consisted of or comprised immoral or scandalous matter. Brunetti brought a First Amendment challenge to the “immoral or scandalous” bar before the Federal Circuit.

Federal Circuit Decision

The U.S. Court of Appeals for the Federal Circuit found that while the USPTO’s Trademark Trial and Appeal Board did not err in finding the mark should be excluded under Section 2(a) of the Lanham Act, that section’s bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech.

Supreme Court Decision

Andrei Iancu, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO petitioned the Supreme Court, which granted certiorari, and held in a decision on June 24, 2019 that the Lanham Act’s prohibition on registration of “immoral or scandalous” trademarks violates the First Amendment.

Writing for the majority, Justice Kagan held that in Matal v. Tam, this Court declared unconstitutional the Lanham Act’s ban on registering marks that “disparage” any “person[ ], living or dead.” 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 pro- fane 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.