In dispute over denial of trademark application for word “FUCT,” Supreme Court declares unconstitutional Lanham Act’s prohibition on registration of “immoral or scandalous” trademarks, holding that prohibition discriminates on basis of viewpoint, in violation of First Amendment.
The U.S. Supreme Court considered an appeal from a decision of the U.S. Court of Appeals for the Federal Circuit holding that the Lanham Act’s bar on registering “immoral or scandalous” trademarks violated the First Amendment.
Erik Brunetti attempted to register the trademark for “FUCT,” the name of the streetwear clothing brand that he founded in 1990. The Patent and Trademark Office examining attorney refused to register the mark on the grounds that it was a derivative of the expletive “fucked” and thus constituted immoral or scandalous material under Section 2(a) of the Lanham Act, which grants the PTO authority to refuse any registration that “[c]onsists of or comprises immoral, deceptive, or scandalous matter.” On review, the Trademark Trial and Appeals Board affirmed the decision of the examining attorney, stating that the mark was “highly offensive and “vulgar” and that it had “decidedly negative sexual connotations.”
Brunetti then brought a facial challenge to the “immoral or scandalous” bar in the U.S. Court of Appeals for the Federal Circuit. The Federal Circuit agreed with the TTAB that the mark fell within the scope of the restriction on immoral or scandalous marks because it is vulgar, but reversed the TTAB’s decision on the grounds that Section 2(a)’s restriction on immoral or scandalous marks is unconstitutional under the First Amendment. The Supreme Court granted certiorari and affirmed the Federal Circuit’s decision in a 6-3 opinion.
The Court relied heavily upon its 2017 decision in Matal v. Tam, in which it held that if a trademark registration bar is viewpoint-based, it is unconstitutional on its face. In Matal, the Court declared unconstitutional the Lanham Act’s bar on registering marks that “disparage” any “person, living or dead.” Here, the Court struck down the “immoral or scandalous” bar as similarly viewpoint-based. In doing so, the Court considered dictionary definitions of those terms and concluded that the Lanham Act “permits registration of marks that champion society’s sense of rectitude and morality, but not marks that denigrate those concepts” and “allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety.” Illustrating this point, the Court identified several examples where the PTO had refused to register marks communicating “immoral” or “scandalous” views about drug use, religion, and terrorism—e.g., MARIJUANA COLA, BONG HITS FOR JESUS, AL QAEDA—but had approved registration of marks expressing more accepted views on the same topics—e.g., D.A.R.E. TO RESIST DRUGS AND VIOLENCE, JESUS DIED FOR YOU, WAR ON TERROR MEMORIAL.
The government, as petitioner, argued that the statute was susceptible to a limiting construction that would remove its viewpoint bias and advocated narrowing the statutory bar to “marks that are offensive [or] shocking to a substantial segment of the public because of the mode of expression, independent of any views that they may express.” The government argued this would effectively restrict the PTO to refusing marks that are “vulgar” (i.e., lewd, sexually explicit or profane). The Court, however, rejected this approach, stating that it may interpret statutory language to avoid constitutional doubts only when the language at issue is ambiguous—which the registration bar was not. According to the Court, “[t]o cut the statute off where the Government urges is not to interpret the statute Congress enacted, but to fashion a new one.”
The Court also rejected the government’s invitation to “uphold the statute against facial attack because its unconstitutional applications are not ‘substantial’ relative to ‘the statute’s plainly legitimate sweep.’” Pointing to Tam, the Court held that once it has found a statute to exhibit viewpoint bias, it need not weigh the statute’s permissible applications against its impermissible ones. In any event, the Court held, the bar at issue is “substantially overbroad,” as “[t]here are a great many immoral and scandalous ideas in the world . . . and the Lanham Act covers them all.”
In a concurring opinion, Justice Alito pointed to the importance of protecting free speech, calling viewpoint discrimination a “poison to a free society” and noting that “a law banning speech deemed by government officials to be ‘immoral’ or ‘scandalous’ can easily be exploited for illegitimate ends.”
Justice Sotomayor, dissenting in part, opined that the Lanham Act’s bar on “scandalous” marks (but not “immoral” marks) could be read narrowly to bar only the registration of obscene, vulgar or profane marks, which would salvage the bar from facial attack. She warned of “unfortunate results” she expected would follow the majority’s opinion: a “coming rush” of applications for registration of “the most vulgar, profane, or obscene words and images imaginable,” and the PTO’s powerlessness to reject them. She argued that the trademark registration system is, by definition, content-based and that registration is equivalent to a government subsidy as opposed to a fundamental right. In other words, whether or not a trademark can be registered with the PTO does not affect the trademark owner’s ability to use the mark in commerce, does not restrict his speech, nor punish him; rather, if the trademark is denied registration, its owner is merely denied certain additional benefits stemming from federal trademark registration. Chief Justice Roberts and Justice Breyer issued separate opinions dissenting in part, in which they largely agreed with Justice Sotomayor.