This month, the Supreme Court struck down 25 U.S.C. § 1052(a) of the Lanham (Trademark) Act of 1946, which prohibited federal trademark registration of “immoral or scandalous” marks for goods and services, on the grounds that it violated the First Amendment’s Free Speech Clause as impermissible viewpoint-based discrimination due to its favoring of certain ideas over others.
Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), states that no trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it “[c]onsists of or comprises immoral, deceptive, or scandalous matter …” The trademark at issue in the case was “FUCT,” a streetwear brand, which the U.S. Patent and Trademark Office (“PTO”) and the Trademark Trial and Appeal Board found to be “unregistrable” because it was “highly offensive” and “vulgar” with “decidedly negative sexual connotations.” What constitutes “immoral” or “scandalous” is highly subjective and differs among cultures, norms, ethnicities, and individuals. Therefore, the Supreme Court found that “the statute, on its face, distinguished between two opposing set of ideas: those aligned with and those hostile to conventional moral standards, those inducing societal nods of approval and those provoking offense and condemnation.” The law, however, cannot disfavor offensive ideas and discriminate based on viewpoint, in violation of the First Amendment.
The PTO attempted to argue why the two provisions (immoral v. scandalous) should be classified differently, but the Court said the “scandalous” bar was just as much of a violation of the Constitution as the “immoral” bar. The PTO also offered to only reject trademarks that were lewd or profane in “mode of expression,” while remaining neutral on underlying viewpoints. They based this distinguishing category on the fact that the First Amendment “does not prohibit Congress from making vulgar terms and graphic sexual images ineligible for federal trademark registration.” Justice Kagan, writing for the majority, rejected such a course of conduct because it would mean the Court would have to fashion a new statute different than what Congress had intended. While the Court is empowered to narrowly interpret an unclear statute to avoid striking it down as unconstitutional, the majority opinion did not find anything unclear about the trademark prohibition language.
The three Justices who dissented from the majority opinion would have split up the statutory provision in question, deeming the ban on “immoral” material unconstitutional while reading the “scandalous” bar separately and narrowly as a constitutional, viewpoint-neutral ban on truly vulgar trademarks. Justice Sotomayor particularly urged against “permit[ing] a rush to register trademarks for even the most viscerally offensive words and images that one can imagine.” Justice Roberts chose to focus on a more holistic weighing of the rule, being that federal trade and service mark applicants who were denied federal registration based on the immoral or scandalous provision could still use the mark without federal registration, resulting in no restricted speech. The Justices did wrestle with whether striking down the provision would mean that the PTO would be obligated to register trademarks encompassing the most offensive of racial slurs.
The Court’s ruling means that the PTO is no longer permitted to refuse registration of an applied-for mark on the grounds that it consists of curse words or other offensive material. This is a long awaited victory for those who criticized the “immoral or scandalous” prohibition on the basis that moral judgments were not compatible with a trademark statute. But Justice Kagan, writing for the majority, refused to take a stance on the issue of the possible constitutionality of a future law limited merely to lewd, sexually explicit, and profane marks. So, it is possible Congress could respond to the decision with a statute limiting the registration refusal to such offensive marks.
The holding was not entirely surprising for many commentators. In 2017, the Supreme Court in Matal v. Tam held that another Trademark Act provision prohibiting registration for disparaging trademarks (the mark in question was “THE SLANTS”), violated the First Amendment. Under the disparagement clause, marks that were “positive” about a person were eligible for registration while “derogatory” ones were not, which was the “essence of viewpoint discrimination.” The Court reasoned that the disparagement clause constituted viewpoint discrimination since it directly regulated the expressive component of a trademark, and the government could not discriminate on the basis of viewpoint. Using a heightened form of scrutiny against the disparagement clause, the PTO could not offer a substantial interest in preventing speech expression of ideas that offend. Many scholars borrowed from Matal’s reasoning and analyzed Brunetti in a similar fashion. It will be interesting to see if Congress responds with a narrower prohibition, limiting only “lewd, obscene or profane” marks.
For now, the disparaging, immoral, and scandalous mark restrictions have been lifted and the gates are open for previously unsuccessful applicants and those looking to register offensive marks.
