Section 2(a) of the Lanham Act states that the U.S. Patent and Trademark Office (USPTO) may refuse registration for any trademark that “consists of or comprises immoral . . . or scandalous matter.” Yesterday, in Iancu v. Brunetti, the U.S. Supreme Court struck down this statute as impermissible viewpoint discrimination in violation of the First Amendment. There, the Court essentially extended its recent holding from Matal v. Tam, which held that the Lanham Act’s ban on registering disparaging trademarks was unconstitutional viewpoint discrimination.
Although the justices voted 6-3 in favor of the holding, the Court issued five separate opinions in the decision. Free speech advocates and brands that rely upon shock value should view this decision as a win. Nonetheless, the splintered opinions, coupled with the brevity of the majority decision, leave unanswered some important questions about how trademark statutes will be analyzed for constitutional compliance in the future.
Background on FUCT Trademark
The Brunetti case involves a clothing brand called FUCT, which has been around since the early 1990s. Eric Brunetti filed an application to register the FUCT mark with the USPTO in 2011. The examiner rejected the application under the “immoral or scandalous” clause, explaining that the mark “is the past tense of F*CK,” and “is scandalous because it is disparaging and  total[ly] vulgar.” The Trademark Trial and Appeal Board affirmed. Brunetti appealed to the Federal Circuit, which held the “immoral or scandalous” clause unconstitutional in view of the Supreme Court’s decision in Tam.
The Majority Opinion Finds the “Immoral or Scandalous” Clause to Constitute Impermissible Viewpoint Discrimination
Writing for the majority, Justice Kagan summed the common thread among the Court’s five splintered opinions, writing, “The government may not discriminate against speech based on the ideas or opinions it conveys.” The majority found the “immoral or scandalous” clause violates the First Amendment because it discriminates based on viewpoint. In other words, it would permit registration of one viewpoint while prohibiting registration of a competing viewpoint.
For example, the majority noted that the USPTO had refused to register “YOU CAN’T SPELL HEALTHCARE WITHOUT THC” under the “immoral or scandalous” clause, but it allowed “D.A.R.E. TO RESIST DRUGS AND VIOLENCE” to be registered. The majority used this example to highlight that the “immoral or scandalous” allows the USPTO to treat the same subject matter (here, illicit drug usage) differently depending on viewpoint. Accordingly, the majority concluded that the clause constitutes impermissible viewpoint discrimination and is unconstitutional under the First Amendment.
The Dissenting Opinions Would Uphold the Ban on “Scandalous” Marks
Each writing separately, Chief Justice Roberts, Justice Breyer and Justice Sotomayor argued that “immoral” and “scandalous” should not simply be lumped together as they were in the majority’s analysis. These three justices agreed that the “immoral” clause constitutes impermissible viewpoint discrimination under the First Amendment, but they would have allowed the “scandalous” clause to stand. As Chief Justice Roberts explained, the “scandalous” portion “need not be understood to reach marks that offend because of the ideas they convey; it can be read more narrowly to bar only marks that offend because of their mode of expression—marks that are obscene, vulgar, or profane.”
The Court Seemingly Invites New Legislation Without Articulating a Clear Standard for Evaluating Future Constitutional Challenges to Trademark Statutes
Although the five separate opinions reflect a variety of differing perspectives, the justices seemed to agree that Congress might be able to construct a different viewpoint-neutral statute banning registration of obscene, vulgar, or profane marks. Given the significant attention the Brunetti and Tam decisions have received, Congress is likely to face some pressure to craft a new statute.
Unfortunately, the Court did not provide clear guidance on what level of constitutional scrutiny would be applied to such a new statute (or any other trademark statute, for that matter). The majority avoided the issue entirely, simply following the Tam holding that viewpoint discrimination violates the First Amendment. Justice Breyer’s concurrence-in-part and dissent-in-part suggests that constitutional scrutiny in this context should focus less on whether “the statute at issue should be categorized as an example of ‘viewpoint discrimination,’ ‘content discrimination,’ ‘commercial speech,’ ‘government speech,’ or the like,” but rather should discern whether “the regulation at issue wor[ks] harm to First Amendment interests that is disproportionate in light of the relevant regulatory objectives.”
Justice Sotomayor’s concurrence-in-part and dissent-in-part, however, asserts that “a viewpoint-neutral form of content discrimination that is permissible in the kind of discretionary governmental program or limited forum typified by the trademark-registration system” would be permissible. While that content-based restriction still may be subject to strict scrutiny, prohibiting “the registration of obscene, profane, or vulgar marks qualifies as reasonable, viewpoint-neutral, content-based regulation” that would be constitutional.
Vulgar and Obscene Trademarks Still Must Satisfy Other Statutory Requirements for Registration
Shock can be a valuable marketing tool, and the Brunetti decision gives brands that rely upon shock value additional protections for their marks. We expect to see an uptick in applications to register vulgar terms and images in the coming months, although it is important to remember that vulgar or obscene trademarks still must meet all of the other requirements for registration (including distinctiveness and use in commerce). These requirements tempered the number of applications for disparaging marks after Tam, and they may do the same for vulgar or obscene marks now.
Still, should there be any doubt about using shock value in marketing, the homepage for the FUCT website has been updated to read, “Fuct is free speech. Free speech is Fuct.™”