The U.S. Supreme Court has struck down the section of the Lanham Act which precludes the registration of proposed trademarks that are deemed “immoral or scandalous” citing a violation of the First Amendment.
The case is based on Erik Brunetti’s attempt to register “FUCT” to use on apparel. The United States Patent and Trademark Organization denied his application. However, the U.S. Supreme Court in a ruling issued on June 24th concluded that the “immoral or scandalous” bar similarly discriminates on the bases of viewpoint and so collides with this Court’s First Amendment doctrine.
“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,” wrote the majority opinion.
The opinion follows the more hailed U.S. Supreme Court opinion in Matal v. Tam when a Portland, Oregon-based rock band wanted to deem itself “The Slants.” The U.S. Supreme Court struck down the provision in the Lanham Act barring the registration of “disparaging” trademarks.
The USPTO determined that “FUCT” was “a total vulgar” mark and “therefore unregistrable.” The review board stated the mark was “highly offensive” and “vulgar,” and that it had “decidedly negative sexual connotations.”
Reviewing the Tam decision, it determined that if a trademark registration bar is viewpoint-based, it is unconstitutional. Secondly, the disparagement bar of the Lanham Act was viewpoint-based. Thus, the common conclusion among the justices was that the government may not discriminate against speech based on the ideas or opinions it conveys. Moreover, it cannot discriminate against “ideas that offend.”
Notably, the opinion provides examples from the USPTO which highlight their argument in comparing and contrasting accepted and rejected trademark registrations based on whether or not the government accepts or rejects the viewpoint.
Justice Alito remarked in his Concurring Opinion that “[v]iewpoint discrimination is poison to a free society.” He notes that the ban on “immoral” or “scandalous” marks can be exploited for illegitimate ends. Additionally, while he may disagree with the registration of “FUCT,” he acknowledges that the Court cannot do anything about it unless the law is rewritten.
The opinion is a victory for those of Free Speech and the possibility to register marks that might have contrary opinions to mainstream society. Yet, even with Justice Alito’s concern of the stricken clause in the Lanham Act to be exploited, so too could be the newfound avenues to register marks which are protected by the First Amendment, but are all the same reprehensible and do not contribute to societal mores.
The problem here is that while pop culture is changing and evolving, the Lanham Act remains the same.
For businesses and entities looking to trademark marks with controversial names, the ruling should help the possibility of registration with the USPTO.
