The Supreme Court has upheld the Federal Circuit’s decision in In re Brunetti, 877 F.3d 1330 (Fed. Cir. 2017) holding that the provision of the Lanham Act that bars the registration of “immoral or scandalous” trademarks violates the First Amendment. Iancu v. Brunetti, No. 18-302, 6/24/2019.
The trademark at issue is the mark “F U C T” which Brunetti uses for a clothing line. The Patent and Trademark Office (“PTO”) barred registration of this mark as being “immoral or scandalous” as required by the Lanham Act, categorizing “F U C T” as “a total vulgar,” “extremely offensive” and “therefore unregistrable” mark. Brunetti appealed the rejection.
In Matal v Tam (2017), a parallel provision of the Lanham Act that bars registration of disparaging marks was found unconstitutional as being viewpoint based. Similarly, the key question here is whether the “immoral or scandalous” provision is viewpoint neutral or viewpoint based.
The Court found the “immoral or scandalous” provision viewpoint based. Specifically, the Court noted that the Lanham Act “permits registration of marks that champion society’s sense of rectitude and morality, but not marks that denigrate those concepts” and that it “allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety.” As such, the Court held that “put the pair of overlapping terms together and the statute, on its face, distinguishes between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them; those inducing societal nods of approval and those provoking offense and condemnation.”
As such, the Court ruled that the Lanham Act’s ban on federal registration of “immoral or scandalous” trademarks is unconstitutional under the First Amendment.
In a concurring opinion, Justice Alito noted that the 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.”