Jun 24, 2019

Supreme Court Rejects Registration Restrictions for Offensive Marks

Supreme Court Photo

On June 24, 2019, the United States Supreme Court held that prohibiting registration of scandalous or immoral trademarks violates the First Amendment’s protection of free speech. Iancu v. Brunetti, 588 U.S. ___ (2019). This ruling joins the Court’s 2017 companion decision in Matal v. Tam, which invalidated the Lanham Act’s restriction on disparaging trademarks. We previously wrote about the Matal v. Tam decision here. These decisions mean that the U.S. Patent and Trademark Office (PTO) can no longer deny registration on the basis that others may find the mark offensive.

In this morning’s decision in Iancu v. Brunetti, the Supreme Court decided 6-3 that the Lanham Act unconstitutionally restricts speech on the basis of viewpoint. The trademark applicant sought registration of the mark FUCT for a clothing line, which he stated was an initialism, with each letter to be pronounced separately. The PTO instead read the mark as “the past participle form of a well-known word of profanity” and denied registration under section 2(a) of the Lanham Act, which prohibits registration of any mark if it “consists of or comprises immoral, deceptive, or scandalous matter[.]” 15 U.S.C. § 1052. The PTO reasoned that the mark failed its test under the provision, which asks whether a substantial fraction of the public would find the mark shocking to the sense of decency or propriety.

The Court held that the Lanham Act’s prohibition on the registration of scandalous or immoral marks is inconsistent with freedom of speech, finding that the restriction impermissibly restricts commercial speech and is not viewpoint neutral. In reaching this decision, the Court cited examples of the PTO denying registrations conveying approval of drug use while issuing registrations for anti-drug messages. It cited similar examples relating to religion and terrorism. The Court noted that these decisions were understandable, as the rejected registrations expressed opinions that were offensive to many Americans. Despite being “understandable,” however, the Court reiterated its position under the First Amendment, that “a law disfavoring ‘ideas that offend’ discriminates based on viewpoint, in violation of the First Amendment.” Accordingly, the Court struck down the scandalous and immoral prohibitions.

Now that the Lanham Act’s restrictions on immoral, scandalous, and disparaging trademarks have been struck, business owners can register their marks even if they include terms that some might find offensive, as long as they otherwise meet registration requirements. This also means that prior applicants who had registrations denied on this basis can resubmit their applications as they can no longer be denied on this basis.

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