Supreme Court Strikes Down Prohibition on Immoral or Scandalous Trademarks

On June 24, 2019, the United States Supreme Court ruled unconstitutional the Lanham Act’s prohibition on immoral or scandalous trademarks. In Iancu v. Brunetti (No. 18-302), the Court held that the prohibition violates the First Amendment because it impermissibly restricts freedom of speech.

Section 2(a) of the Lanham Act prohibits registration of marks that “[c]onsist[] of or comprise[] immoral . . . or scandalous matter.” Relying on that portion of the statute, the United States Patent and Trademark Office (“USPTO”) regularly refused registration of marks that included – or even implied – profane language. This case was brought by Erik Brunetti, the owner of a streetwear brand called “FUCT.” Though Mr. Brunetti argued that his mark was correctly pronounced by spelling out the four separate letters (“F-U-C-T”), the USPTO nevertheless refused registration on the ground that the mark was scandalous and vulgar. In the government’s view, the mark FUCT could be perceived as – to put it mildly – “the equivalent of [the] past participle form of a well-known form of profanity.”

The Supreme Court, consistent with and relying on its 2017 decision in Matal v. Tam, where it held the ban on disparaging marks unconstitutional, ruled in favor of Brunetti. The Court pointed out that the “government may not discriminate against speech based on the ideas or opinions it conveys” and that the USPTO cannot deny registration based on the views expressed by a mark. According to the Court, the law’s provision is impermissibly “viewpoint based” in that it “allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety.”

So, unless and until Congress amends this portion of the Lanham Act to avoid this First Amendment problem, the USPTO no longer gets to decide what is immoral, scandalous or profane. The USPTO issued Examination Guide 2-19 indicating that the USPTO would begin removing applications which were previously suspended pending resolution of Iancu v. Brunetti from suspension at least 25 days after Mr. Brunetti’s case is returned to the USPTO or on July 19, 2019, at the earliest, and will be examining those applications.

For the time being, owners of potentially “immoral or scandalous” marks that were previously refused registration, or were never filed because of expected refusals, should decide whether those marks are still important, significant or valuable and consider filing new applications or filing a petition to revive, if the deadline has not yet passed. After all, there are only so many colorful words . . . or creative ways to imply them.