SCOTUS Rules Federal Ban on Registration of “Immoral” or “Scandalous” Trademarks Violates the First Amendment


n a major win for free
speech advocates, on Monday, June 24, 2019, the United States Supreme Court
ruled that a federal statutory ban on the trademarking of words and symbols
that are “immoral” or “scandalous” violates the First Amendment.

Erik Brunetti of Los
Angeles, a fashion designer for the streetwear brand “FUCT,” brought suit after
being denied registration of the mark “F-U-C-T.” Brunetti applied for
registration of the mark in 2011, but an examining attorney of the United
Stated Patent and Trademark Office refused registration on the grounds that the
phonetically profane term was too “highly offensive” and too “vulgar.” Brunetti
appealed to the Trademark Trial and Appeal Board (the “TTAB”), but to no avail,
as the TTAB affirmed the registration refusal. Brunetti took his case to the
Court of Appeals for the Federal Circuit and sought a facial Constitutional challenge
to the Lanham Act’s ban on “immoral or scandalous” marks; the appeals court
held that the ban violated the First Amendment, and the Supreme Court granted

In a rare bipartisan
ruling, Justice Elena Kagan wrote for the majority, and in a 6-3 decision, was
joined by Ruth Bader Ginsburg, Samuel Alito, Neil Gorsuch, Brett Kavanaugh, and
Clarence Thomas. Justice Alito added a brief concurrence, and justices
Sotomayor, Roberts, and Breyer each concurred in part and dissented in part.

Lanham Act § 1052(a)

The section of the Lanham
Act at issue in Brunetti provides in
relevant part: “No trademark by which the goods of the applicant may be
distinguished from the goods of others shall be refused registration on the
principal register on account of its nature unless it –

  • Consists of or comprises immoral,
    deceptive, or scandalous matter
    ; or matter which may
    disparage or falsely suggest a connection with persons, living or dead,
    institutions, beliefs, or national symbols, or bring them into contempt, or
    disrepute  . . . .”

challenged the constitutionality of the bolded language of subsection (a) in a
highly anticipated follow-up to a recent challenge to the language that
immediately follows.

Ban in Tam

Just two years ago in Matal
v. Tam
, the Supreme Court was faced with ruling on the constitutionality of
a similar ban in § 1052(a) of the Lanham Act – the
registration of trademarks that “disparage” a person or group of people. The
Court ruled then that the ban on the registration of “disparaging” marks, which
was deemed a “viewpoint based” ban, violated the First Amendment by restricting
free speech. Justice Anthony Kennedy held that the disparagement bar was the
“essence of viewpoint discrimination” which is presumptively unconstitutional. Tam’s decision was also a closely
watched victory for the Redskins, whose registration had been canceled by the
USPTO on the same ground, and whose case had been wending its way through the
court system as well.

Due to Tam’s ruling, the Brunetti case has been closely analyzed in comparison. Justice
Kagan’s opinion held that a ban on “immoral” or “scandalous” marks was just as
unconstitutional as the ban on “disparaging” marks, in that barring marks that
may offend a person or people discriminates on the basis of viewpoint, and thus
“collides with our First Amendment doctrine.” Justice Kagan clarified that “the
statute, on its face, distinguishes between two opposed sets of ideas: those
aligned with conventional moral standards and those hostile to them; those including
societal nods of approval and those provoking offense and condemnation. The
statute favors the former, and disfavors the latter.” This, Justice Kagan
continues, is “facial viewpoint bias in the law” which “results in
viewpoint-discriminatory application.”

Re-writing of the Law to Make it Constitutional

Justice Kagan noted that
the federal government could not genuinely claim that the “immoral or
scandalous” bar is viewpoint-neutral, as it conceded that the “Lanham Act’s
language, on its face, disfavors some ideas.” The government proposed a
limiting construction of the statute to ban “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.” However, the Court pointed to the statutory
language, noting that the ban goes further than what the government proposed.
Quoting United States v. Stevens,
Justice Kagan declined to entertain the government’s proposal, reminding the government
that “[w]e will not rewrite a law to conform it to constitutional
requirements.” Justice Alito, in his concurrence, added that the justices “are
not legislators and cannot substitute a new statute for the one now in force.”

Accordingly, the “immoral
or scandalous” bar of § 1052(a) has
been deemed substantially overbroad and the Supreme Court affirmed the Court of
Appeals’ ruling.

and Dissents

While Justices Sotomayor,
Breyer, and Roberts concurred with the majority on the unconstitutionality of
banning “immoral” marks, in their dissents, they partially agreed with the government’s
proposal of providing a limiting construction for “scandalous” marks. According
to Justice Sotomayor, the term “scandalous” is ambiguous and can be read either
broadly or narrowly, and in order to save that language from
unconstitutionality, a limiting construction for “modes of expression” may be
appropriate. Justice Breyer, agreeing with Justice Sotomayor, stated that the
Supreme Court’s speech-related categories should be treated as rules of thumb,
and instead of focusing on categorization, one should ask: “does [the
prohibition on registering ‘scandalous’ marks] wor[k] harm to First Amendment
interests that is disproportionate in light of the relevant regulatory
objectives?”  Using that analysis,
Justice Breyer answered his own question in the negative. Justice Roberts went
as far in his dissent to say that refusing trademark registration of
“scandalous” marks does not restrict speech or punish anyone because
trademark owners would still be able to use their marks in commerce.


While the majority
opinion in Brunetti does away with
the “scandalous marks” provision of §
1052(a) of the Lanham Act, the
three dissenting opinions may provide a roadmap for Congress to amend the
Lanham Act to deal with the issue of trademarking “scandalous” marks in a
narrower way that the current Supreme Court may tolerate. Should Congress
decide to act, it is possible that we may see a crop of cases dealing with the
intersection of free speech and trademark rights.  But for now, “those provoking offense and
condemnation” have the freedom to express that angst (albeit in a commercial
way) despite potential profanity – a result consistent with long-established
First Amendment principles. 

Filed in: Legal Blog, Trademarks and Brands

June 26, 2019