United States: First Amendment: 3, Lanham Act: 0 - SCOTUS Holds Lanham Act Prohibition On Immoral And Scandalous Marks Is Unconstitutional Restriction On Free Speech

Last Updated: July 1 2019
Article by Annie Hartnett and Kristen McCallion

Following on the heels of Matal v. Tam in 2017, the Supreme Court on Monday issued a 6-3 opinion in Iancu v. Brunetti striking down the Lanham Act's prohibition on "immoral" and "scandalous" trademarks, holding that it violates the Free Speech Clause of the First Amendment.


Eric Brunetti is an artist based in Los Angeles. In 1990, he created his own clothing line under the brand name "FUCT." In 2011, Brunetti sought to register his brand name "FUCT" with the U.S. Patent and Trademark Office. The USPTO denied Brunetti's application, citing Section 2(a) of the Lanham Act, which prohibits registration of trademarks that are "immoral[ ] . . . or scandalous." 15 U.S.C. 1052(a). Brunetti challenged this law on First Amendment grounds, arguing that the statutory prohibition on "immoral" or "scandalous" marks is unconstitutional because it discriminates based on the viewpoint of the speech. Six justices on the Supreme Court agreed that the provision was unconstitutional in its entirety, while the remaining three justices concurred in part and dissented in part.

The Supreme Court's decision

At the outset, the majority reviewed their holding in Matal v. Tam, noting that any trademark statute that prohibits registration of a mark conveying certain ideas and not others are is facially invalid. The Court then held that the statute was in fact viewpoint discriminatory, and therefore unconstitutional as written. In doing so, the majority swiftly dismissed the government's argument that the current statutory wording can be view-point neutral when narrowly interpreted in such a way that it only prohibits marks that are offensive or shocking in the mode of their expression. Justice Kagan, writing for the majority, responded by pointing out that the government's interpretation and the unambiguous wording of the statute are "markedly different," and was therefore unpersuasive. Op. at 8-9.

Justice Alito filed his own separate concurrence in essence to communicate that Congress is still free to adopt a law that "precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas." Op. of Alito, J., at 1. The three remaining justices (Roberts, Breyer, and Sotomayor) each issued their own opinions concurring in part and dissenting in part. Roberts agreed that "immoral" was not susceptible to a narrower construction, but believed "scandalous" was capable of being deemed a stand-in phrase for limiting vulgar or obscene marks. Justice Breyer took the same position as Roberts, but further disagreed with the majority's rigid and categorical approach to determining the protection afforded particular speech under the First Amendment. Breyer also noted that it remains an open question as to "whether the trademark statute is simply a method of regulating pure 'commercial speech.'" Op. of Breyer, J., at 3. Sotomayor, joined by Breyer, combined the views expressed by both Roberts and Breyer by agreeing that the "immoral" prohibition is unconstitutional, but further arguing that (1) "scandalous" is distinct from "immoral" and ambiguous on its own, and therefore susceptible to a narrow—and constitutional—construction, (2) the refusal to register a mark does not impact the use of the mark, and (3) reasonable, view-point neutral, and content-based regulations are allowed under the Constitution and should therefore be allowed in this context given that the prohibition is reasonable and does not restrict the speaker's actual expression. Op. of Sotomayor, J., at 9-10, 14-18.

What does this mean for trademark law going forward?

In the short term, this decision means that the Trademark Office cannot use Section 2(a) to deny registration for "immoral" or "scandalous" marks. The Trademark Office may still be able to argue that certain marks are properly refused registration under existing obscenity laws, but it is unclear how this type of refusal would play out. Trademark practitioners are also wondering about a possible influx of new trademark filings for marks that were once clearly banned.

More In the long term, both Matal and Iancu make clear that the next move, if any, will need to come from Congress.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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