US Supreme Court Lifts Ban on Profane Trademarks

A statue of lady justice

Iancu v Brunetti (SCOTUS, No. 18-302)

It may now be possible to register trademarks that are vulgar or offensive. On June 24th, the US Supreme Court (the “Supreme Court”) released a decision abolishing the Lanham Act’s ban on registering scandalous or immoral trademarks. The challenge to the Act was brought to the Supreme Court by Erik Brunetti, founder of a clothing line sold under the name FUCT. Brunetti convinced the Court that the prohibition contravenes the First Amendment because it permits trademarks about such topics as drug use, religion, and terrorism only if they reflect views that are generally accepted by society.

Background

The Lanham Act establishes the rules for what can and cannot be a trademark and includes a prohibition against trademarks consisting of or comprising immoral or scandalous matter. [pg. 1] On this basis, the Patent and Trademark Appeal Board (“PTAB”) denied Brunetti’s application to register the trademark FUCT, explaining that it had “decidedly negative sexual connotations” and communicated “misogyny, depravity, [and] violence.” [pg. 3] The Court of Appeals for the Federal Circuit reversed that decision, finding that the prohibition in the Lanham Act is unconstitutional.

Viewpoint Bias

This decision followed in the footsteps of Matal v Tam (“Tam”), a 2017 case which invalidated the prohibition on trademarks that disparage a deceased person. In Tam, the Supreme Court determined that any bar to trademarks that is “viewpoint-based” contravenes the “bedrock First Amendment  principle” that the government cannot discriminate against “ideas that offend.” [pg. 5] For instance, the disparagement bar permitted positive reflections on a deceased, but not derogatory reflections. [pg. 5]

Similarly, the bar on immoral and scandalous trademarks also enforces a viewpoint bias. Based on dictionary definitions as well as guidelines provided by the United States Patent and Trademark Office (“USPTO”), the meaning of “scandalous” and “immoral” reflect society’s general understanding of decency. Therefore, the provision discriminates against viewpoints that do not align with majority opinions.

For example, the USPTO has disallowed religious references that would offend Christians but has allowed trademarks that convey religious faith such as PRAISE THE LORD and JESUS DIED FOR YOU. [pg. 7]

In defence of the Lanham Act, USPTO proposed that the provision not be struck and that the Court instead interpret the provision so as to eliminate viewpoint bias. However, the Supreme Court found this solution unworkable. While the Court may interpret “ambiguous statutory language,” it cannot rewrite laws. [pg. 9] Nor, can the provision be saved to the extent that there are permissible applications of the law. A law aimed at suppressing views must be struck down, regardless of whether the government could have prohibited some of those views with a narrower law. [pg. 10-11]

Commentary

This decision opens up the possibility of registering profane and explicit words that previously have been censored by the USPTO. However, the Supreme Court leaves room for the government to rewrite the law, possibly refining its rules to disallow only lewd, sexually explicit, or profane trademarks. At this point, it is unclear whether the American government will attempt to impose a new ban. Nor has the Supreme Court clearly indicated the limits of such a ban. For the time being, registering a profane or vulgar trademark may impose certain risks. For more information, please contact a PCK IP professional.

A statue of Lady Justice.