The United States trademark registry may soon come with a parental advisory, thanks to a recent Supreme Court decision.
On June 24, 2019, the U.S. Supreme Court struck down a longstanding provision in the Lanham Act that banned the registration of marks deemed “immoral or scandalous.” In Iancu v. Brunetti, the Court determined that the provision violated the First Amendment. The Court’s opinion not only reaffirms prevailing viewpoints on the principles of free speech, but will have a substantial effect on trademark law.
In Brunetti, the owner of a clothing brand spelled as a variation of the infamous, four-letter “F” word attempted to protect his mark through a federal trademark registration. The United States Patent and Trademark Office (USPTO) denied the mark’s registration under Section 2(a) of the Lanham Act, finding that it consisted of “immoral or scandalous” matter in violation of that section.
The Court’s opinion noted the statute “does not draw the line at lewd, sexually explicit, or profane marks” but that it actually “covers the universe of immoral or scandalous . . . material.” Further, the Court reasoned that “a law disfavoring ‘ideas that offend’ discriminates based on viewpoint in violation of the First Amendment.” Although this decision changes longstanding trademark law, it was foreshadowed by the result two years ago in Matal v. Tam, in which the Supreme Court invalidated another portion of the same statute that prohibited the registration of “disparaging” trademarks, such as racially offensive terms.
The Brunetti ruling means the USPTO can no longer refuse to register such marks. In anticipation of the Court’s ruling, the Office has already received a spike in applications seeking trademark registrations of different variations of the four-letter “F” word.
For those seeking more liberty within trademark law, this Supreme Court decision is a win. Four of the nine Justices, however, expressed concern over the ripple effects this result may have in society and other areas of law. They suggested various ways that Congress might act to revise the Lanham Act that would bar some registrations in a way that survives constitutional scrutiny. For example, these Justices would have upheld a ban that applied only to “scandalous” but not “immoral” marks. A more narrowly tailored ban on registering “obscene,” “vulgar” and “profane” marks may also pass muster, so long as it was careful not to discriminate against particular viewpoints.
If you have any questions, please contact Scott Keller, Mary Bonnema, Jim Scott, Brian Wassom or any attorney in Warner’s Intellectual Property Practice Group.