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Supreme Court Allows Registration of Immoral and Scandalous Marks

On June 24, 2019 the Supreme Court decided Iancu v. Brunetti, declaring that a law which prevented the federal registration of trademarks that are “immoral” – meaning “vulgar” or “morally crude” – or “scandalous” – meaning “offensive to the conscience of moral feelings” – is unconstitutional as a restriction on free speech. This decision has social and practical implications for trademark owners pushing the edge with expressive trademarks, who now can and should seek the benefits of US federal registration.

Background: In 1990, Erik Brunetti and Natas Kaupas launched the anti-establishment clothing line, FUCT. After the brand gained popularity in both the U.S. and Japan, counterfeit FUCT merchandise appeared on eBay and Amazon. To protect his customers from fake products, Brunetti applied to the United States Patent and Trademark Office (USPTO) for federal registration of the mark so U.S. Customs could enforce his trademark rights at the border by seizing counterfeit imports. In 2011, the USPTO denied Brunetti’s application for trademark registration because FUCT was an immoral or scandalous mark.

Brunetti appealed the decision, and the Federal Circuit found in his favor. The USPTO appealed to the Supreme Court, arguing that the government had a legitimate interest in protecting the public from offensive expressions. The Supreme Court decided that denying federal trademark registration to FUCT, based on the immoral or scandalous nature of the mark, was an unconstitutional restriction on Brunetti’s first amendment rights. The Court analogized this case to an earlier case called Matal v. Tam, where the USPTO refused to register THE SLANTS for a musical group, based on a law that prohibited the registration of “disparaging” trademarks. The Supreme Court decided that an anti-disparaging law is unconstitutional, and allowed the registration of THE SLANTS.

Rationale for the Decision: The majority opinion in Brunetti, written by Justice Kagan and joined by Justices Thomas, Ginsburg, Alito, Gorsuch, and Kavanaugh, found that the statute prohibiting FUCT’s registration was viewpoint discriminatory because the statute favors trademarks that subscribe to conventional moral standards and disfavors those that do not. The Court found evidence of viewpoint discrimination by comparing registrations granted for socially acceptable marks – such as D.A.R.E. TO RESIST DRUGS AND VIOLENCE, which adheres to society’s negative view of drugs and violence, and WAR ON TERROR MEMORIAL, which supports the mainstream view of the War on Terror – with registrations denied to socially outcast marks – such as MARIJUANA COLA, which advocates for the use of cannabis, and BABY AL QAEDA, which promotes “the bombing of civilians and other terrorist acts [which] are shocking to the sense of decency and call out for condemnation.” The Court held that even marks which are immoral or scandalous are entitled to federal trademark protection.

In her dissenting opinion, Justice Sotomayor paints a grim picture of the future of the trademark registry, overrun with “the most vulgar, profane, [and] obscene words and images imaginable.” If Sotomayor is right, competition for registration of immoral and scandalous marks will be on the rise.          

What does this mean for you? If you offer goods and services under marks that deviate from mainstream social conventions, now you can protect those marks nationally. You may also face heightened competition for federal registration of similar marks. Federal registration confers several benefits not previously available to immoral and scandalous marks, such as a presumption of exclusive, nationwide, trademark rights, constructive notice to others of those rights, and the opportunity to record the rights with U.S. Customs to help prevent the importation of counterfeit goods.

–  Contributed by Kate Christensen

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