The U.S. Supreme Court issued its most recent decision yesterday picking away at the same clause of the Lanham Act, Section 2(a), 15 U.S.C. § 1052(a), and this time finding that the United States Patent and Trademark Office’s (PTO) prohibition on the registration of “immoral” or “scandalous” marks is a violation of the First Amendment’s free speech rights. Iancu v. Brunetti (2019). Two terms ago, in Matal v. Tam, 582 U.S. __, 137 S. Ct. 1744 (2017), the Court struck down the PTO’s ban on the registration of disparaging marks.

In affirming the decision of the U.S. Court of Appeals for the Federal Circuit which had overturned the PTO’s refusal to register the mark FUCT for clothing, all the Justices agreed that the ban on “immoral” marks is an unconstitutional viewpoint-based restriction that “disfavors certain ideas.” The Justices split on the issue of whether “scandalous” marks were unconstitutional, with six of the Justices joining the Court’s opinion, authored by Justice Kagan, and three Justices writing separately to concur and dissent.

Justice Alito, concurring, expressed concern that “in many countries with constitutions or legal traditions that claim to protect freedom of speech, serious viewpoint discrimination is now tolerated, and such discrimination has become increasingly prevalent in this country.” Recognizing that “a law banning speech deemed by government officials to be ‘immoral’ or ‘scandalous’ can easily be exploited for illegitimate ends,” Justice Alito also noted 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.”

Justices Roberts, Breyer, and Sotomayor each wrote separately to concur and dissent on the basis that the Court should read the statute so as to uphold the scandalous prohibition by applying a narrow construction that would limit only the “mode of expression” (“such as vulgarity and profanity”), and not the viewpoint. Together with Justices Roberts and Breyer, Justice Sotomayor expressed concern about the Government’s registration of obscene, vulgar, or profane speech, finding that a refusal to register such marks does not offend the First Amendment. Justice Sotomayor remarked: “A restriction on trademarks featuring obscenity, vulgarity, or profanity is [] viewpoint neutral, though it is naturally content-based.”

As Justices Breyer and Sotomayor pointed out, there are certain modes of speech that are so vulgar or profane that they have been found to have lasting impacts on the audience. Justice Breyer in particular noted that “scientific evidence suggests that certain highly vulgar words have a physiological and emotional impact that makes them different in kind from most other words.” And Justice Sotomayor remarked: “As for what constitutes ‘scandalous’ vulgarity or profanity, I do not offer a list, but I do interpret the term to allow the PTO to restrict (and potentially promulgate guidance to clarify) the small group of lewd words or ‘swear’ words that cause a visceral reaction, that are not commonly used around children, and that are prohibited in comparable settings.”

So did the Court strike the right balance here by invalidating the ban on both immoral and scandalous marks, or will the decision “beget unfortunate results” “permit[ting] a rush to register trademarks for even the most viscerally offensive words and images that one can imagine,” as Justice Sotomayor cautions? Will there be a deluge of formerly prohibited marks, or will this be a flash in the pan that slows down over time when the novelty wears off? And will Congress step in with a new statute that seeks to find a balance in the prohibition of obscene, vulgar, or profane marks, or will other mechanisms come to the fore to help regulate the general public display of such marks?