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FUCT? You Heard That Right: Refusing to Register “Scandalous” and “Immoral” Trademarks is Unconstitutional

The U.S. Supreme Court, in a split decision, held that the federal ban on registering “scandalous” and “immoral” trademarks is an unconstitutional violation of free speech under the First Amendment of the US Constitution. The trademark FUCT is what was at issue in Iancu v. Brunetti, case number 18-302 (June 24, 2019).  Although the mark had been in use on clothing for many years, it was never accepted for registration by the US Trademark Office on grounds that it violated the ban on registration of “scandalous” and “immoral” marks under Section 1052(a) of the Lanham Act.

Two years ago, the Court, in a unanimous decision in Matal v. Tam, declared that the same statutory section that banned registration of marks that “disparage” any “person[], living or dead,”  was an unconstitutional violation of free speech. [See Mintz's prior post on the Matal decision.] In that case, a rock band had sought to register the mark THE SLANTS for “entertainment in the nature of live performances by a musical band.” The US Trademark Office had determined that the mark disparaged the Asian community and refused to register it. The Court held that banning registration of such marks was impermissible and unconstitutional “viewpoint discrimination.” THE SLANTS® is now the subject of U.S. Registration No. 5332283 which issued on November 14, 2017.

The majority opinion in Brunetti, written by Justice Kagan, held that barring registration of the word FUCT discriminated on the basis of viewpoint and violated the Court’s First Amendment doctrine. The Court held that to allow the Lanham Act to permit “registration of marks that champion society’s sense of rectitude and morality, but not marks that denigrate those concepts” results in viewpoint discriminatory application of the statute which is unconstitutional on its face.

The Court rejected the Government’s contention that the statute was susceptible to a limiting construction that would remove viewpoint by bias by narrowing the statutory bar to “marks that are offensive [or] shocking[] because of their mode of expression, independent of any view that they may express.” The Government’s position was intended to restrict the refusal to register to marks that are “lewd, sexually explicit, or profane.” However, the majority of the Court did not accept the Government’s proposal because the statute specifically stated something markedly different from the “limited construction” the Government was proposing. The Court found that there was no ambiguity in the construction of the statute and that the Court “would not rewrite a law to conform to constitutional requirements.” The statute, as written, did not “draw the line at lewd, sexually explicit, or profane marks,” nor did it refer only to marks whose “mode of expression” independent of viewpoint was particularly offensive. The Court stated that the Government’s position encouraged the Court not to interpret the statute that Congress had enacted, but to fashion a new one, which was not within the Court’s power. Thus, since the “immoral or scandalous” bar was substantially overbroad, it violated the First Amendment.

Of note is the fact that Justice Kagan included a footnote in the opinion indicating that the majority was not commenting on the constitutionality of a future law passed by Congress that might limit the ban on registration to lewd, sexually explicit, and profane marks. The concurring and dissenting opinions expounded on Justice Kagan’s footnote and made clear that the Court’s decision did not prevent Congress from adopting a registration ban that was more carefully focused on speech that could be subjected to government regulation such as obscenity, child pornography, and fighting words. It remains to be seen whether Congress will take up this challenge.

Justice Sotomayor, in her partial dissent, predicted that the Court’s decision would lead to a “rush” to register vulgar brand names. However, in this writer’s opinion any such flood of vulgar trademark filings would be short-lived. It is doubtful that the American public has a real taste for vulgar, obscene, violent, and patently offensive brands.

These two decisions by the Court striking down the noted provisions of the Lanham Act as a violation of free speech under the U.S. Constitution will probably have little, if any, effect on efforts to register the same or similar marks in other countries. The US courts all agreed that the marks at issue were vulgar and offensive, and many countries have laws forbidding registration of trademarks that fall into these and other restricted categories. The difference is that most other countries do not have a Constitution guaranteeing the right to free speech, which is the basis for striking down the registration bans under US law. This marked and unique distinction between US jurisprudence and that of other countries will undoubtedly be the dividing line on the registrability of marks of this type worldwide.

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Susan Neuberger Weller manages the Trademark & Copyright Practice at Mintz. Susan assists clients with securing and protecting IP assets across the globe. She's worked with clients in a variety of industries, including pharmaceuticals, medical devices, software, electronics, and entertainment.