Supreme Court Says Prohibition Against Scandalous Trademarks Violates First Amendment

On June 24, 2019, the United States Supreme Court issued a ruling holding that the Lanham’s Acts provisions preventing the registration of trademarks that are immoral or scandalous violates the First Amendment.

In Iancu v. Brunetti, the Supreme Court specifically directed the U.S. Patent and Trademark Office to allow the registration of the term FUCT for clothing.  Brunetti filed a trademark application for this term with the U.S. Patent and Trademark Office. The Trademark Office rejected the application under 15 U.S.C. §1052(a) which prevents registration of marks which consist of or comprise ‘immoral or scandalous” matter. Brunetti challenged this rejection claiming that that provision of the Lanham Act discriminates against registration of trademarks based on the viewpoint maintained by the person seeking registration of the mark.  He further claimed that government action which discriminates against certain types of speech based on the content or viewpoint of the proposed speech is a violation of the First Amendment to the Constitution. The Supreme Court upheld Brunetti’s challenge to that provision of the trademark act.

The Supreme Court gave several examples to demonstrate that the law preventing registration of immoral or scandalous marks was viewpoint discrimination.  They pointed out that in the past, trademark registrations were allowed for marks such as: D.A.R.E. TO RESIST DRUGS AND VIOLENCES, and SAY NO TO DRUGS – REALITY IS THE BEST TRIP IN LIFE, both of which adopted a generally accepted viewpoint opposing drugs; but had refused to register marks such as YOU CAN’T SPELL HEALTHCARE WITHOUT THC for pain relief mediation, MARIJUANA COLA and KO KANE both for beverages, which were marks promoting illegal drugs, even where the goods or services used with those marks was legal.

The Supreme Court has consistently held that the First Amendment prohibits the government from discriminatory action based upon the viewpoint expressed in speech. This decision builds upon the Court’s prior ruling in Matal v. Tam, 173 S. Ct. 1744 (2017), where the Court invalidated a related trademark law provision which previously had allowed the Trademark Office to prevent the registration of trademarks which were disparaging to certain groups or individuals.

This decision opens up trademark registration for all types of trademarks, including those marks which are immoral, scandalous, or which would be construed as generally offensive. 

Ira M. Schwartz is a partner with Parker Schwartz, PLLC in Phoenix, Arizona, where he practices technology and intellectual property law.

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