United States: Supreme Court: "There Are A Great Many Immoral And Scandalous Ideas In The World . . . And The Lanham Act Covers Them All."

Erik Brunetti is a Los Angeles-based artist. In 1990, he created the streetwear brand Fuct with professional skateboarder Natas Kaupas, and for the last 29 years the label has been producing the sort of outré clothing its name suggests. The company's website displays an example: a hooded sweatshirt displaying the phrase "FUCT Los Angeles." Unlike most other long-lived clothing labels, however, Fuct has never secured a federal registration for its mark.

That may soon change. On June 24, 2019, in Iancu v. Brunetti, No. 18-302, the Supreme Court struck down, on First Amendment grounds, the section of the Lanham Act that prohibited the registration of "immoral" or "scandalous" marks. Writing for a six-Justice majority, Justice Kagan opined that the "immoral or scandalous" bar constituted impermissible viewpoint discrimination and therefore violated the First Amendment.

The Court's decision will likely lead to federal registration for many other trademarks that incorporate objectionable or subversive phrases or images. It is less clear, however, what the future holds for marks like FUCT. Several Justices mentioned the possibility that a statute more narrowly tailored to bar registration based on the mode of expression, without regard to the speaker's perspective—i.e.,barring registration of marks that contain profanity, racial epithets, or other vulgarities—might be permissible under the First Amendment.

The Court Strikes Down the "Immoral or Scandalous" Bar

This legal dispute started when Mr. Brunetti tried to register FUCT in connection with athletic, children's and infant's apparel. The United States Patent and Trademark Office (PTO) denied registration, finding that FUCT violated Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), because it "comprise[d] immoral or scandalous matter." The Trademark Trial and Appeal Board (Board) affirmed, relying in part on the Urban Dictionary's definition of the word "fuct" as "slang and literal equivalent" of the past tense of the word "f[***]," and Brunetti's use of the mark on clothing to convey "misogyny, depravity, [and] violence."

Mr. Brunetti appealed to the United States Court of Appeals for the Federal Circuit. Before the Federal Circuit issued its decision, the Supreme Court decided Matal v. Tam, 137 S. Ct. 1744 (2017). Tam involved a related provision of Section 2(a), which barred the registration of marks that tend to disparage any individual, institution, or belief. The Supreme Court ruled that the disparagement bar violated the First Amendment, because it constituted discrimination on the basis of the trademark owner's viewpoint. Relying on Tam, the Federal Circuit reversed the Board's denial of registration, holding that the "immoral or scandalous" bar, like the disparagement bar, discriminates based on viewpoint and is therefore also unconstitutional under the First Amendment.

The Supreme Court affirmed. Justice Kagan's majority opinion emphasized that the Court's First Amendment jurisprudence has consistently overturned government restrictions that discriminate based on the viewpoint of a speaker because "[t]he government may not discriminate against speech based on the ideas or opinions it conveys" or because the Government "disapprov[es] of a subset of messages it finds offensive."

To the majority, "immoral" and "scandalous" could only be understood to refer to the "ideas or opinions" of the mark owner seeking registration:

When is expressive material "immoral"? According to a standard definition, when it is "inconsistent with rectitude, purity, or goods morals"; "wicked"; or "vicious." . . . So the Lanham Act permits registration of marks that champion society's sense of rectitude and morality, but not marks that denigrate those concepts. And when is such material "scandalous"? Says a typical definition, when it "giv[es] offense to the conscience or moral feeling". . .

In sum, Section 2(a) "allows registration of marks when their messages accord with, but not when their messages defy, society's sense of decency or propriety." The facially discriminatory nature of the "immoral or scandalous" bar was reflected in the PTO's application of the statute in practice, according to the Court. For instance, the PTO had registered SAY NO TO DRUGS—REALITY IS THE BEST TRIP IN LIFE while denying registration to marks suggesting opposing views about the same topic, including YOU CAN'T SPELL HEALTHCARE WITHOUT THC and BONG HITS 4 JESUS.

The government argued that the Court should avoid the First Amendment issue by interpreting the immoral or scandalous bar to only include "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." The Court refused. The Court recognized that the PTO itself does not parse the separate meanings of "immoral" and "scandalous," but instead applies the bar as a "unitary provision." Moreover, the Court held that neither "immoral" nor "scandalous" were ambiguous, and therefore the Court could not give the terms the meaning the government suggested. As the majority explained, "[t]o cut the statute off where the government urges is not to interpret the statute Congress enacted, but to fashion a new one."

While every Justice agreed that the "immoral" portion of the "immoral or scandalous" bar could not be interpreted in the limited manner the government proposed, Chief Justice Roberts and Justices Breyer and Sotomayor each dissented in part to opine that the "scandalous" portion of the bar could be. Justice Sotomayor presented the most detailed analysis of this issue, arguing that "scandalous" is ambiguous because it may refer to either the content of speech, or the mode in which the speech is expressed. If the latter, "scandalous" is a permissible "viewpoint-neutral form of content discrimination." Although Chief Justice Roberts did not join Justice Sotomayor in her reasoning, each of the dissenting Justices agreed that "scandalous" may be interpreted in this manner, and that such a restriction on the mode of expression—rather than the underlying idea expressed by the mark—would be permissible under the First Amendment.

No Resolution of Proper First Amendment Framework

As it did with respect to the disparagement bar in Tam, the Court struck down the "immoral or scandalous" bar without resolving, as Chief Justice Roberts put it, "how exactly the trademark registration system is best conceived under our precedents." In other words, the majority's opinion does not turn on the treatment of federal trademark registration as "government speech," "commercial speech," or the like. To the Court, that the law discriminated on the basis of viewpoint was sufficient to strike it down without resolving these questions of categorization.

Justice Breyer wrote separately to argue that a "category-based approach to the First Amendment" would not be useful in this context. He proposed—as he has in other First Amendment cases—replacing the Court's First Amendment framework with a simple proportionality question: does the regulation at issue cause disproportionate harm to First Amendment interests in light of the objectives the regulation addresses? Under that analysis, a broad prohibition on registering "immoral" marks would not survive First Amendment scrutiny, but a narrower prohibition focusing on the "scandalous" mode of expression would.

Only Justice Sotomayor attempted to fit the federal registration system within a particular First Amendment framework, and even she did not argue for one in particular. She explained that, "[w]hen the Court has talked about government initiatives like [the registration system], it has usually used one of two general labels . . . a limited public (or nonpublic) forum . . . [or a] "government program[] or subsid[y]." Under either framework, she argued, the Court has generally permitted "viewpoint-neutral content discrimination." Like Justice Breyer's, Justice Sotomayor's analysis would permit narrow restrictions on the registrability of marks incorporating particular "scandalous" modes of expression.

Implications for Future Applications to Register "Immoral" or "Scandalous" Marks

The holding in Brunetti will likely lead to new applications to register trademarks that would have previously been subject to a refusal under the "immoral or scandalous" bar. Justice Sotomayor twice identifies the "coming rush to register" "marks containing the most vulgar, profane, or obscene words and images imaginable[,]" which she says is a result that is "eminently avoidable" if the majority agreed with her narrower view of the statute.

Presumably, the forecasted uptick in applications for marks that might otherwise have been deemed immoral or scandalous reflects a common understanding about the importance of securing federal trademark registration. As the majority recognized, federal trademark registration confers "valuable benefits":

For example, registration constitutes "prima facie evidence" of the mark's validity. [15 U.S.C.] § 1115(a). And registration serves as "constructive notice of the registrant's claim of ownership," which forecloses some defenses in infringement actions. [15 U.S.C.] § 1072.

The "rush to register" will, additionally, not only include new applications, but also pending applications that the PTO had suspended pending the outcome of Brunetti. Many of the marks subject to suspension under the "immoral or scandalous" bar dispense with Brunetti's coy use of homonym and use profanity directly, including: I'M NOT GOING TO F[***] YOU and F[***] CHILD SUPPORT. The decision may also open the door to the federal registration of marks referring to marijuana, which have previously been refused under the "immoral or scandalous" bar. (However, to the extent that applicants seek registration for such marks in connection with marijuana products, they may still face refusal for failure to demonstrate lawful use in commerce, as long as marijuana products themselves remain illegal under federal law.)

Possibly, the registration of marks previously subject to the "immoral or scandalous" bar will prompt a legislative response. If so, the dissenting opinions' discussion of the constitutionality of a narrow "scandalous" bar may provide guidance for crafting a statute that would survive constitutional scrutiny by limiting its application to particularly vulgar or obscene modes of expression. The majority's decision does not expressly rule out the permissibility of such a restriction under the First Amendment, and Justice Alito, who joined the majority but also wrote a separate concurrence, seemed to invite new legislation, writing that "[o]ur decision does not prevent Congress from adopting a more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas."

Should Congress pass such a law, it may not be long before Mr. Brunetti, or another applicant like him, raises a new First Amendment challenge. Until then, Mr. Brunetti and his decades-old clothing brand can likely look forward to a time in the near future when FUCT appears on the Principal Register.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Skadden, Arps, Slate, Meagher & Flom (UK) LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Skadden, Arps, Slate, Meagher & Flom (UK) LLP
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions