Brands may now register for “scandalous” trademarks, the U.S. Supreme Court ruled last Monday. Erik Brunetti, a streetwear designer and head of the brand “FUCT,” filed to federally register its brand with the U.S. Patent and Trademark Office (PTO) in 2011. The PTO rejected the application because of the phonetic pronunciation and offensiveness of the word.
The Supreme Court granted certiorari to hear the case and, in a 6-3 vote, struck down the “scandalous or immoral” clause of the federal trademark statute (the “Lanham Act”). The Lanham Act, created in 1946, gives the PTO the ability to create and maintain a federal register of trademarks, while also setting forth criterion for the PTO to consider when examining and granting trademarks. The “scandalous or immoral” provisions of the Lanham Act bans trademarks for words or symbols deemed inappropriate by society. The Supreme Court ruled that such a “scandalous” provision relied on an unconstitutional form of viewpoint-based discrimination.
This case follows closely a previous Supreme Court decision in 2017 (“The Slants” case) that struck down the “disparaging” clause of the Lanham Act. Two years ago, the Supreme Court ruled the PTO may grant trademarks for words that may be disparaging against individuals or groups. The case received widespread media coverage for its result’s potential effect on the “Washington Redskins” organization. Following the decision allowing “disparaging” trademarks, the Redskins successfully filed for a trademark despite the inflammatory mascot.
Justice Kagan wrote the majority opinion relying on the previous “disparaging” decision: “We hold that this provision infringes the First Amendment for the same reason: It too disfavors certain ideas.” Justices Thomas, Ginsburg, Alito, Gorsuch and Kavanaugh joined with Kagan in the majority. “The rejected marks express opinions that are, at the least, offensive to many Americans,” Justice Kagan added. “But as the court made clear in Tam [“The Slants” case], a law disfavoring ‘ideas that offend’ discriminates based on viewpoint, in violation of the First Amendment.”
Kagan continued by targeting the subjective nature of the “scandalous” provision. “The statute, on its face, distinguishes between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them; those inducing societal nods of approval and those provoking offense and condemnation,” Justice Kagan wrote. “The statute favors the former, and disfavors the latter.”
Chief Justice Roberts and Justices Breyer and Sotomayor concurred in part and dissented in part. The Justices fear for an influx of lewd or vulgar trademarks into the federal PTO Register. They instead recommended a rewrite of the statute so that it may be narrowly tailored to keep particularly obscene phrases and symbols from reaching federally registered trademark status.
However, many trademark attorneys within the field (including yours truly) disagree with the dissenting Justices. While companies may now seek problematic trademarks, they must still consider significant practical issues - the marketplace and their consumers, who may find the marketing to be distasteful. Furthermore, a large majority of the Lanham Act remains in enforce. Those seeking to federally register their trademarks must prove they are actually using, or intend to use, the trademark in their regular course of business. The trademark must also be more than merely descriptive and should be distinct from existing trademarks.
Despite the Supreme Court’s dismissal of the “scandalous” provision, both the majority opinion and the dissents agreed that a revision of the provision to limit denying trademarks for explicit or profane content may be constitutional under certain circumstances. Congress may now take the Justices’ opinion as a cue to reexamine the language of the Lanham Act and introduce future legislation to amend it accordingly. Stay tuned!