Last week, the Supreme Court issued an opinion in Iancu v. Brunetti, 18-302 (June 24, 2019), holding the ban on registering immoral or scandalous trademarks is unconstitutional. Brunetti sought to register the trademark FUCT for use on clothing with the U.S. Patent & Trademark Office. The trademark examiner assigned to Brunetti’s application refused to register the mark, citing Section 2(a) of the Lanham Act (15 U.S.C. § 1052(a)), which prohibits registration of trademarks that consist of “immoral . . . or scandalous matter.” The Trademark Trial and Appeal Board affirmed, finding that Brunetti’s mark was “highly offensive,” “vulgar,” and had “decidedly negative sexual connotations.” Brunetti appealed to the Federal Circuit, asserting a facial challenge to the “immoral and scandalous” bar. The Federal Circuit agreed with Brunetti that the bar violated the First Amendment. The Supreme Court granted certiorari.
In an opinion by Justice Kagan, joined by Justices Thomas, Ginsburg, Alito, Gorsuch, and Kavanaugh, the Supreme Court affirmed the Federal Circuit. The Court had previously decided that a similar bar to registration of certain trademarks—namely, disparaging marks—was unconstitutional in Matal v. Tam, 137 S. Ct. 1744 (2017). Like the ban addressed in Matal v. Tam, the Court held the ban on immoral and scandalous marks amounted to viewpoint discrimination—i.e., registration is allowed where a mark’s message accords with, but not when its message defies, society’s sense of decency and propriety. The Court rejected the government’s argument that the ban could be narrowly interpreted to be viewpoint neutral by barring only marks that are offensive or shocking because of their mode of expression, independent of any views that they may express. While the Court can interpret ambiguous statutes to avoid serious constitutional doubts, the Court determined the immoral and scandalous bar to be unambiguous and unconstitutional on its face.
In a concurring opinion, Justice Alito noted that a better-written statute could have barred the registration of Brunetti’s mark without running afoul of the First Amendment. Chief Justice Roberts, Justice Breyer, and Justice Sotomayor each concurred in part and dissented in part. Each asserted that the statute could be read by disjoining “immoral” and “scandalous,” and that narrowly interpreting “scandalous” could permit a viewpoint-neutral bar on obscene, vulgar, and profane marks, like Brunetti’s, that would pass constitutional muster.