Supreme Court Strikes Down the Ban of “Scandalous” Trademarks

The Lanham Act provides for several bans on federal registration of a trademark, including marks that are misdescriptive, or those including a living person’s name without their consent. This prevents applicants from registering marks that may cause legal issues in the future, based on the trademark examiner’s review of the mark.

Three years ago, the Supreme Court struck down a Lanham Act provision banning federal registration of Trademarks that could “disparage… or bring… into contemp[t] or disrepute” any “persons, living or dead.”[1] This decision marked a new age in trademark law, as the Court held that the band The Slants could register their band name as a trademark, even though the name had a racially-insensitive connotation. The Court’s reasoning was mostly based on the idea that the government should not have an opinion on what is and isn’t disparaging, and therefore any registration bar that is viewpoint-based violated the First Amendment.

On Monday, June 24, the Supreme Court struck down yet another restrictive provision of the Lanham Act which prevented the registration of “immoral” or “scandalous” marks.[2]

The case involved Erik Brunetti who, in 2011, sought to register the trademark “FUCT,” standing for “FRIENDS U CAN’T TRUST,” a brand name which he had been using to sell fashion items since the 90s. The U.S. Patent and Trademark Office rejected his registration on the grounds that it was “scandalous,” as the term was phonetically similar to the past tense of a common offensive word. Brunetti, bolstered by the Slants ruling, appealed the USPTO’s decision, claiming that the ban was unconstitutional as it violated the First Amendment. The Supreme Court ultimately agreed with him, stating that, similar to the disparaging bar in Slants, the immoral and scandalous bar was viewpoint based, and therefore unconstitutional.

The Court further explained that the label of “disparaging mark” was decided based on popular culture and customs. This method of examination, the Court continued, was too subjective to be upheld: “How, then, can the Government claim that the immoral and scandalous bar is viewpoint-neutral?”[3] The Court ultimately struck down this provision of the Act, leaving mostly viewpoint-neutral bars for trademark registration.

After this decision, many are wondering what exactly was the difference between the provision in the Slants case and the one in Brunetti. Well, the former required that the mark be negatively targeted towards specific people, particularly vulnerable populations, such as individuals, racial minorities and religious groups. The latter provision called for a bar for marks that were deemed immoral and/or scandalous based on national values and customs, whether or not the mark would actually be deemed offensive to specific people when used in commerce.

These decisions only leave the following bars on the record for future trademark applicants: geographically misdescriptive marks; marks that contain flags or other insignia of any nation, state or municipality; previously-registered marks used in connection with similar goods and/or services; marks that contain the name, portrait or signature of a living individual or deceased President of the United States without consent; and descriptive or descriptively misdescriptive marks.[4]

This decision reinforced the Supreme Court’s broad interpretation of the First Amendment and will allow for many brand owners to finally obtain protection for their trademarks. Trademark registration, now more than ever, is a crucial step to maintaining and protecting a brand. If you believe your mark may qualify for federal trademark registration after the Brunetti decision, feel free to contact us, and we would be happy to assist you.

[1] 15 U.S.C. § 1052(a)

[2] Iancu v. Brunetti, No. 18-302, 2019 U.S. LEXIS 4201, 18 (June 24, 2019)

[3] Id. at 14.

[4] 15 U.S.C. § 1052