Today, a divided Supreme Court issued its ruling in a 6-3 decision, striking down the U.S. Government’s ban on registering trademarks deemed to be immoral, vulgar, obscene or scandalous. The Court ultimately concluded that Section 2(a) of the Lanham Act, which prohibits the registration of any “immoral … or scandalous matter”, violates the First Amendment and the free speech rights of brand owners.
The case at issue was Iancu v. Brunetti, 588 US _ (2019), where clothing designer Erik Brunetti sought registration of the trademark FUCT for his clothing line. Brunetti was denied registration by the United States Patent and Trademark Office (“USPTO”) because his mark was deemed to be immoral and/or scandalous profanity, and therefore was not protectable under the law. The majority in the Supreme Court, however, disagreed. “The ‘immoral or scandalous’ bar is substantially overbroad,” wrote Justice Elena Kagan for the majority opinion. “There are a great many immoral and scandalous ideas in the world (even more than there are swearwords), and the Lanham Act covers them all. It therefore violates the First Amendment.”
Chief Justice Roberts dissented, along with Justice Bryer and a partial dissent by Justice Sotomayor. “The First Amendment protects the freedom of speech; it does not require the government to give aid and comfort to those using obscene, vulgar and profane modes of expression,” Roberts argued in his dissent. Justice Sotomayor wrote separately to lament that, with this holding, “[t]he government will have no statutory basis to refuse (and thus no choice but to begin) registering marks containing the most vulgar, profane or obscene words and images imaginable.”
Nonetheless, free speech advocates maintain that justice was served by the Court’s ruling today. Previously, the Federal Circuit had reached a similar conclusion in Brunetti, prior to the case reaching the Supreme Court, holding, “even private expression which is offensive to a substantial composite of the general public” is protected by the First Amendment. Now, current law dictates that immoral and/or scandalous trademarks will no longer be refused registration by the USPTO simply as a result of their offensive nature. This opens the door to a floodgate of brand owners seeking protection for some of their more risqué names and/or slogans.
The Court’s decision today further affirmed its previous, unanimous decision in Matal v. Tam, 582 U.S. ___ (2017), when the Court similarly struck down the same statute, Section 2(a) of the Lanham Act, as unconstitutional in violation of the First Amendment, as our firm had first reported here. The Court in Tam, however, ruled only that the ban on “disparaging” trademarks was unconstitutional. Tam did not directly reach the issue of whether a prohibition on “immoral” or “scandalous” trademarks violated the First Amendment. However, with the Court’s ruling today in Brunetti, the entirety of Section 2(a) of the Lanham Act has now been found to be an unconstitutional restraint on free speech.
If you have a trademark, slogan or logo you wish to protect, call the offices of Reyes & Schroeder Associates, P.C., at 323-553-1541, or e-mail us at email@example.com. We promise not to be offended!
The attorneys at Reyes & Schroeder Associates, P.C. are highly experienced in trademark prosecution services, routinely obtaining successful registrations at the USPTO for our clients. Our qualified attorneys will insure you receive the highest quality legal counsel, necessary to secure proper protection of your marks across the entire United States. You may read the full opinion of the Supreme Court’s decision in Iancu v. Brunetti, 588 US ___ (2019), discussed above in this article here: https://supreme.justia.com/cases/federal/us/588/18-302/
About the Author: Michael W. Schroeder is a licensed attorney in good standing in the State of California with extensive experience in trademark prosecution, litigation and transaction legal services (www.trademark.legal).