Supreme Court Strikes Down Portion of the Lanham Act Related to Scandalous Marks
The United States Supreme Court ruled earlier this year that a trademark applicant’s mark—one that sounds a lot like the “F-word”—is entitled to a trademark registration. The result of that decision is considered a victory for free speech.
In Iancu v. Brunetti, Erik Brunetti sought federal registration of the mark “FUCT” for his business’ clothing line. The Lanham Act prohibits the registration of marks that “consist of or comprises immoral…or scandalous matter.” Prior to the Brunetti decision, in determining whether a mark consisted of or comprised immoral or scandalous matter, the United States Patent and Trademark Office (the “PTO”) would assess whether a substantial amount of the general public would find the mark to be shocking to the senses of truth, decency, or propriety, disgraceful, offensive, disreputable, or vulgar. The PTO examining attorney, as well as the Trademark Trial and Appeal Board, found that Brunetti’s mark was “highly offensive” because the mark may be perceived to have a “decidedly negative sexual connotation” communicating “misogyny, depravity, [and] violence,” and refused registration.
Brunetti appealed the PTO’s refusal to register his mark to the Court of Appeals for the Federal Circuit, which found the Lanham Act’s prohibition on the registration of immoral and scandalous matter to violate the First Amendment. The Federal Circuit referred to a prior Supreme Court decision, Matal v. Tam, which invalidated, on First Amendment grounds, the Lanham Act’s prohibition on the registration of marks that are disparaging. In Tam, the Supreme Court affirmed the Federal Circuit’s prior decision that Simon Tam was entitled to registration for the mark “The Slants” for his band, despite the PTO’s position that the mark was disparaging to people of Asian descent.
The Supreme Court, in both Brunetti and Tam, found that where a prohibition on trademark registration is viewpoint-based, it is unconstitutional. In Tam, the Court held that the disparagement bar was viewpoint-based and, therefore, unconstitutional. Similarly, the Brunetti Court concluded that the “immoral or scandalous” bar could not be viewpoint-neutral in light of the PTO’s application of the bar.
In light of both Brunetti and Tam, individuals and businesses with marks that may be considered immoral or scandalous or disparaging may reassess their trademark portfolios and consider whether federal registration, now that it may be possible, would be beneficial. It remains to be seen whether there will be a flood of applications for such marks in the coming months, as predicted by Justice Sotomayor in her dissent in part in Brunetti.
Clay D. Haag, Summer Associate