United States: SCOTUS: Lanham Act's Ban On Registration Of "Immoral Or Scandalous" Marks Unconstitutional

Two years ago, in Matal v. Tam, the Supreme Court invalidated the Lanham Act's ban on the registration of offensive trademarks. On June 24, 2019, the Supreme Court struck again, this time invalidating the federal registration ban on immoral and scandalous trademarks.

The "immoral/scandalous clause" in Section 2(a) of the Lanham Act prohibits registration of marks that "[c]onsist[] of or comprise[] immoral[] or scandalous matter."  To determine whether a mark is immoral or scandalous, the Patent and Trademark Office ("PTO") asks whether a substantial composite of the general public would find the mark "shocking to the sense of truth, decency, or propriety"; "giving offense to the conscience or moral feelings"; "calling out for condemnation"; "disgraceful"; "offensive"; "disreputable"; or "vulgar."

Erik Brunetti sought federal registration for the mark FUCT for a clothing line.  The PTO and the Trademark Trial and Appeal Board refused registration under the above test, finding FUCT was "a total vulgar," "highly offensive," and had "decidedly negative sexual connotations." Brunetti appealed to the Federal Circuit, which found the prohibition of immoral/scandalous marks violated the First Amendment's free speech clause. The PTO appealed, and the Supreme Court affirmed.

Justice Kagan delivered the Court's opinion, joined in full by Justices Thomas, Ginsburg, Alito, Gorsuch, and Kavanaugh.  The Court's analysis logically began with the most analogous precedent—Matal v. Tam.  There, all eight Justices agreed that "if a trademark registration bar is viewpoint-based, it is unconstitutional." Thus, the only issue to be decided was whether the immoral/scandalous clause was viewpoint-neutral or viewpoint-based. 

"It is viewpoint-based," said the Court. 

The majority looked to the definitions of "immoral" and "scandalous" in coming to that conclusion.  "Immoral," according to Webster's New International Dictionary, is defined as "inconsistent with rectitude, purity, or goods morals; wicked; or vicious."  "Scandalous" is defined by the same dictionary as something that "gives offense to the conscience or moral feelings; excites reprobation; or calls out condemnation." Consequently, the Court concluded that the scandalous/immoral clause permits registration of marks that "champion society's sense of rectitude and morality, but not marks that denigrate those concepts," and "accord with, but not when their messages defy, society's sense of decency or propriety." 

To demonstrate this viewpoint-discriminatory nature, the Court cited numerous examples of registered marks communicating positive messages and refused marks communicating negative messages about drug use, religion, and terrorism, examples of which appear below: 

Drug Abuse

  • Refused: YOU CAN'T SPELL HEALTHCARE WITHOUT THC for pain-relief medication
  • Registered:A.R.E. TO RESIST DRUGS AND VIOLENCE for various products and apparel

Religion

  • Refused: AGNUS DEI for safes
  • Registered: PRAISE THE LORD for a game

Terrorism

  • Refused: BABY AL-QAEDA for t-shirts
  • Registered: WAR ON TERROR MEMORIAL entertainment services, a cemetery plot, and conducting memorial services

The PTO proposed narrowing the provision to only those marks that offend or shock because of "the mode of expression, independent of any views that they may express" to avoid this viewpoint discrimination. According to the PTO, this narrowing would restrict the clause to prohibit only vulgar, lewd, sexually explicit, or profane marks. 

The Court refused this proposal. It concluded that the definitions of "immoral" and "scandalous" unambiguously covered the universe of immoral or scandalous marks, not just those that are vulgar, lewd, sexually explicit, or profane. Because the Court found the clause unambiguous, it would not "rewrite a law to conform it to constitutional requirements." In other words, "[t]o cut the statute off where the [PTO] urges is not to interpret the statute Congress enacted, but to fashion a new one," which is the responsibility of Congress, not the Court.

Chief Justice Roberts and Justices Breyer and Sotomayor each issued partial dissents and concurrences.  All three Justices concurred that the bar on "immoral" marks was plainly viewpoint discriminatory and could not be saved (the Court was unanimous on this point).  But they each dissented on the ground that the "scandalous" provision could be saved by narrowing it only to bar "obscenity, vulgarity, and profanity."

Justice Sotomayor issued the lengthiest dissent, opining that because the word "scandalous" was ambiguous, the Court could have, and should have, adopted the interpretation that saved the statute—namely, narrowing the scandalous mark ban to obscenity, vulgarity, or profanity. She likened the narrowed scandalous clause to content-discriminating but viewpoint-neutral programs, such as government subsidies and limited public forums, that may subsist so long as they are based on "reasonable viewpoint-neutral content regulations." Because she believed the PTO's interest in "refraining from lending its ancillary support to marks that are obscene, vulgar, or profane" was reasonable, she concluded the clause should stand. Chief Justice Robert's short partial dissent largely mirrored Justice Sotomayor, and Justice Breyer came to the same conclusion through a different avenue. He concluded that the Lanham Act did not fit neatly into any of the Court's speech-related rules, so the Court should instead evaluate whether the First Amendment harm caused by the narrowed scandalous clause is disproportionate considering the relevant regulatory objectives. He placed heavy weight on the PTO's interest in dissociating from "highly vulgar or obscene speech" and the severe physiological effect that speech has on individuals, especially children. These interests, he concluded, far outweighed the minimal First Amendment harm on Brunetti, who could still use his mark without registration.

Could the dissenter's willingness to maintain a narrowed scandalous clause signal safety for the Lanham Act's more substantive provisions? Only time will tell, but for now, the PTO should prepare for an onslaught of "immoral" and "scandalous" trademark applications.

The case is Iancu v. Brunetti, No. 18-302 (June 24, 2019).

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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