In the recent but now famous U.S. Supreme Court case of Iancu v. Brunetti, the mark in question was, as discussed at oral argument, a homonym of the past participle of a well known profanity — “F.U.C.T.” (which was purportedly meant to be pronounced by its initials). One of the niceties of both the oral argument and the opinion is that they gracefully avoided the profanity which sounds substantially similar to the proposed trademark.
A few words in the Trademark Act itself were under fire: The Court held that, consistent with Matal v. Tam — which struck down the statutory restriction against registering “disparaging trademarks,” so that USPTO would allow registration of the band name THE SLANTS — the provision that expressly requires the denial of a registration that is “immoral …or scandalous” is an unconstitutional restriction on the First Amendment. (Both provisions are parts of Lanham Act Section 1052(a).) Both the Tam and Brunetti decisions share the idea that such statutory restrictions improperly disfavor certain ideas.
In this case, the Federal Circuit Court of Appeals had already ruled that the “immoral and scandalous” provision was constitutionally invalid. Based on the lower court’s invalidating a federal statute, the Supreme Court granted certiorari to consider the matter.
The government (in support of the statute, of course) admitted that federal trademark registration must be viewpoint-neutral to survive a free speech clause review.
Justice Kagan, writing for the majority of the Court, noted that the USPTO’s considering whether the public would view a proposed trademark as “shocking to the sense of truth, decency, or propriety” has been the rationale for denying certain registrations and accepting others. For example, some applications regarding marijuana and cocaine were turned down — but the registration of trademarks for organizations like SAY NO TO DRUGS and D.A.R.E. were approved. Other trademark applications that mocked Christianity were rejected — but those like PRAISE THE LORD were accepted. This kind of discernment clearly shows that the USPTO, as a practical matter, was using this provision of the trademark statute to approve some ideas and disapprove of others. That, the majority determined, is a governmental, content-based decision about ideas and expression — and is therefore prohibited.
The government basically asked the Court to treat any selective approval and rejection of trademark applications as mistakes by the USPTO. The Court was not impressed with such argument. Also, the Court was invited to ignore “immoral” and focus on what might be “scandalous”modes of expression — that is, vulgarities which would not serve as trademark identifiers. Not surprisingly, the Court declined to cut up the statute in a way that would actually fashion a new statute. Justice Kagan concluded, “There are many immoral and scandalous ideas in the world. Even more than there are swear words. The Lanham Act covers them all and prevents the registration of some, and therefore, it violates the First Amendment.”
Notably, several Justices concurred and two dissented — but all agreed that “immoral” was problematic.
Justice Alito said, “When you have vulgar terms that really don’t express any ideas, they should be barred from the government giving its approval by registering it. But, as presently written, this is much broader than merely stopping vulgar terms.”
Justice Roberts concurred that “immoral” can’t be narrowly constructed to make it constitutional, but “scandalous,” as Justice Sotomayor had suggested, could be more narrowly construed. He also said that the government has an interest in not associating itself with trademarks whose content is obscene, vulgar, or profane. However, he agreed with the majority that the way the statute was drafted was fatally broad.
Justice Breyer wrote a concurring opinion and said, “We really can’t apply the First Amendment categories that are typically analyzed to a trademark registration statute, so we shouldn’t try to. We should, rather than being results-oriented, look at whether the regulation harms the First Amendment interest in a way that’s disproportionate to relevant objectives.” But even after going through that analysis, Breyer agreed that “immoral and scandalous” inflicted disproportionate results and was unconstitutional.
Justice Sotomayor, joined in part with Justice Breyer, wrote that the majority’s decision would invite a rush of scandalous and immoral trademarks that are going to be filed. She said that the “mode of expression” could be regulated, independently of improperly regulating ideas.
Undoubtedly, a lot of new applications are going to reflect some of the uglier, hateful rhetoric that people feel free to spew. That might now be protected with all of the benefits of a trademark registration. However, notwithstanding the dissent, it is hard to imagine how some vulgarities will serve as trademarks — so maybe they WILL be denied registration, anyway. That is, if someone advised you to “Get F.U.C.T.!”, they’d better be referring to a sale on a distinctive line of clothing — because other uses of that phrase are likely to be deemed generic vulgarities.
As always, we welcome your opinion and comments.
