By Lauren J. Rucinski

In a sequel to its Matal v. Tam decision last year, SCOTUS held that the so called “immoral or scandalous” ban on trademarks was unconstitutional in a 6-3 ruling on June 24.  In the Tam decision, SCOTUS declared the “disparagement” clause of the Lanham Act to be unconstitutional under the First Amendment, but left open the question as to whether the Trademark Office could deny registrations for being immoral or scandalous.[1]

Enter Erik Brunetti and his clothing line “FUCT” (it’s pronounced as four letters, F-U-C-T, but you may read it differently, and according to SCOTUS, “you would hardly be alone”).[2] The Trademark Office denied Brunetti registration of “FUCT” under the “immoral or scandalous” clause of the Lanham Act. Burnetti brought a First Amendment challenge to the “immoral or scandalous” bar in the Federal Circuit, which invalidated the provision. In upholding the First Circuit’s decision, SCOTUS found that, like the over turned disparagement clause, “the ‘immoral or scandalous’ bar similarly discriminates on the basis of viewpoint and so collides with the Court’s First amendment doctrine.”[3]

Under the immoral or scandalous ban, the Lanham Act would permit registration of marks that “champion society’s sense of rectitude and morality, but not marks that denigrate those concepts.”[4] The Trademark Office found that FUCT did not pass that test and labeled the mark “a total vulgar” and “therefore [] unregistrable.”[5] Justice Kagan, who penned the majority opinion, may have channeled Dr. Sues when noting that:

“Love rules”?    “Always  be  good”?    Registration  follows.    “Hate  rules”?   “Always  be  cruel”?    Not  according  to  the  Lanham  Act’s “immoral or scandalous” bar.

SCOTUS also provided other examples of registrations shot down by the Trademark Office under the immoral or scandalous ban in comparison with other marks with the same subject matter that were registered:

  • YOU   CAN’T   SPELL   HEALTHCARE WITHOUT THC for pain-relief medica-tion, MARIJUANA COLA and KO KANE for beverages, because it is scandalous to “inappropriately glamoriz[e]drug abuse.” — but registered D.A.R.E. TO RESIST DRUGS AND VIOLENCE and SAY NO TO DRUGS—REALITY IS THE BEST TRIP IN LIFE;
  • BONG HITS 4 JESUS because it “suggests that people should engage in an illegal activity [in connection with] worship” and because “Christians would be morally out-raged by a statement that connects Jesus Christ with illegal drug use.”— but registered PRAISE   THE   LORD   for   a   game   and   JESUS DIED FOR YOU on clothing; and
  • marks reflecting support for al-Qaeda (BABY AL QAEDA and AL-QAEDA on t-shirts) “because the bombing of civilians and other terrorist acts are shocking to the sense of decency and call out for condemnation—but registered WAR ON TERROR MEMORIAL.”

SCOTUS called these moves “understandable”, but reiterated its holding in Tam that “a law disfavoring ‘ideas that offend’ discriminates based on viewpoint, in violation of the First Amendment.”[6]

SCOTUS also dismissed the government’s argument to narrow  the  statutory  bar  to ‘marks  that  are  offensive  [or]  shocking  to  a  substantial segment of the public because of their mode of expression, independent  of  any  views  that  they  may  express.’”[7] In doing so, SCOUTS refused to “rewrite a law to conform it to constitutional requirements” and noted that the bar “stretches far beyond the Government’s proposed construction” and does not “draw the line at lewd, sexually explicit, or profane marks. Nor does it refer only to marks whose ‘mode of expression,’ independent of viewpoint, is particularly offensive.”[8]

This opinion provides practitioners with not only a trip back to CONLAW 101, but also with a refresher on statutory construction. And it may, for now, leave the door open for marks like FUCT. But as Justice Alito noted in his concurrence, Congress is free to rewrite and adopt a more “carefully focused” statute that could preclude registration for marks containing “vulgar terms that play no real part in the expression of ideas.” In the meantime, we expect an upsurge in filings before Congress can act.

The entire opinion can be viewed here.

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[1] See Offensive Trademarks are Protected Under the First Amendment, https://www.intellectualproperty.law/2017/06/offensive-trademarks-protected-first-amendment/. Under the Lanham Act, the Trademark Office administers a federal resgiration system for trademarks. See 15 U.S.C. §§ 1051, 52.

[2] Incu v. Brunetti, 588 U. S. ____ , 1–2 (2019).

[3] Id. at Syllabus.

[4] Id.

[5] Id. at 3.

[6] Id. at 8.

[7] Id. at 9.

[8] Id. (citing United States v. Stevens, 559 U.S. 460, 481 (2010).