The Supreme Court has handed another loss to the USPTO by finding a First Amendment violation with the Lanham Act’s prohibition from registering “immoral” and “scandalous” trademarks.
Iancu v. Brunetti was brought by an artist and founder of a clothing line who was denied trademark registration for his brand, FUCT. While he claimed the brand name is pronounced by its four letters, F-U-C-T, the USPTO still deemed it prohibited under 15 U.S.C. § 1052(a), which bars the registration of “immoral” and “scandalous” marks. As a result, Brunetti brought a facial challenge to this section of the Lanham Act in the Federal Circuit, which found it violates the First Amendment.
In a 6-3 opinion authored by Justice Kagan, the majority members of the Supreme Court immediately likened the “immoral” and “scandalous” ban to its decision two terms ago in Matal v. Tam—reported here—that invalidated the Lanham Act’s neighboring provision against disparaging trademarks. Justice Kagan found it “infringes the First Amendment for the same reason: It too disfavors certain ideas.” She reasoned, for example:
‘Love rules’? ‘Always be good’? Registration follows.
‘Hate rules’? ‘Always be cruel’? Not according to the Lanham Act’s ‘immoral or scandalous’ bar.
For this reason, the Supreme Court held the ban was impermissibly viewpoint-based because it “permits registration of marks that champion society’s sense of rectitude and morality, but not marks that denigrate those concepts.”
In his concurring opinion, Justice Alito—the principal author Matal v. Tam—reasoned “[v]iewpoint discrimination is poison to free society . . . Our decision is not based on moral relativism but on the recognition that a law banning speech deemed by government officials to be ‘immoral’ or ‘scandalous’ can easily be exploited for illegitimate ends.”