Client Alerts
June 26, 2019

Finally U Can Trademark immoral or scandalous marks

Stites & Harbison Client Alert, June 26, 2019

On June 24, 2019, the United States Supreme Court struck down the Lanham Act’s ban on the registration of immoral or scandalous trademarks as a violation of the First Amendment.

Trademark owner and Los Angeles clothing designer Erik Brunetti filed an application to register the mark FUCT, which he represents is an acronym for “Friends U Can’t Trust”

and “is pronounced as four letters, one after the other: F-U-C-T.” But others have read it as the “past participle form of a well-known word of profanity.”

The Trademark Office denied registration of the mark on the ground that it was “highly offensive” and “vulgar,” thus violating the statutory ban on immoral or scandalous marks. The Trademark Trial and Appeal Board upheld the decision. The Court of Appeals for the Federal Circuit agreed that the term was immoral or scandalous, but found the prohibition against registration of such marks to be an unconstitutional violation of free speech rights. The Supreme Court granted certiorari to decide whether the Lanham Act’s ban on registration of immoral or scandalous marks is facially invalid under the First Amendment.

The U.S. government argued that the immoral or scandalous clause could be construed narrowly primarily to prohibit registration of marks that are vulgar. However, while the Court can interpret ambiguous statutory language to avoid constitutional doubts, it may not rewrite a law to make it constitutional. In this case, the majority concluded that the U.S. government essentially asked it to do the latter rather than the former. A fair reading of the statute’s clause banning registration of immoral or scandalous marks meant discriminating against marks on the basis of viewpoint. Thus, the Supreme Court ruled that “[o]nce the ‘immoral or scandalous’ bar is interpreted fairly, it must be invalidated.”

This ruling comes as no surprise, as it follows in the footsteps of the Supreme Court’s recent decision striking down the Lanham Act’s ban on registration of disparaging trademarks. The Supreme Court applied a similar rationale in its analysis of the Lanham Act’s provision preventing registration of immoral or scandalous marks. Justice Elena Kagan penned the majority opinion and wrote that, like the provision that had banned the registration of disparaging marks, the provision of the Lanham Act preventing registration of immoral or scandalous trademarks “infringes the First Amendment” because it is viewpoint-based and “disfavors certain ideas.”

Justice Kagan wrote that the statute favored ideas aligned with conventional moral standards and disfavored those hostile to them. All nine justices concurred that there was no way to salvage a ban on registration of “immoral” marks from a finding of unconstitutionality. However, Chief Justice John Roberts dissented in part, as did Justices Stephen Breyer and Sonia Sotomayor, stating that the ban on scandalous marks could be read narrowly and survive scrutiny to prohibit registration of vulgar and profane marks. Justice Roberts commented that “The First Amendment protects the freedom of speech; it does not require the Government to give aid and comfort to those using obscene, vulgar, and profane modes of expression.”

In a concurring opinion, Justice Alito signaled to another branch of the federal government that the Supreme Court’s “decision does not prevent Congress from adopting a more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas.” Alito lamented that he could not prevent registration of the mark at issue, noting that “[t]he registration of such marks serves only to further coarsen our popular culture. But we are not legislators and cannot substitute a new statute for the one now in force.”

The Supreme Court struck down the Lanham Act’s current ban on registration of immoral or scandalous marks. It remains to be seen whether Congress will accept the implicit invitation from some of the justices to draft legislation that more precisely bans registration of obscene, vulgar, or profane marks, especially since only four justices expressly indicated support for such a statute.

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Intellectual Property & Technology Intellectual Property Litigation Trademarks