Just after the two-year anniversary of the Supreme Court striking down the trademark registration bar on disparaging marks in Matal v. Tam, 582 U.S. —, 137 S.Ct. 1744 (2017), the high court again excised two more words from the Lanham Act. On Monday, in a majority opinion by Justice Kagan in Iancu v. Brunetti, — U.S. —, 2019 WL 2570622 (June 24, 2019), the Court declared unconstitutional the prohibition on registering “immoral…or scandalous” marks based on similar First Amendment grounds as noted in Tam.
Erik Brunetti, the named plaintiff, is a designer and artist who attempted to register the mark “FUCT” for his line of clothing. Although Brunetti claimed the mark is intended to be read from left-to-right, enunciating each letter individually, the USPTO found the mark profane and thus rejected his trademark registration application under the “immoral or scandalous” bar as “highly offensive” and “vulgar” with “decidedly negative sexual connotations.”
At issue in both Brunetti and Tam is the clash between the First Amendment and trademark rights. In providing trademark registration, a government benefit, the Court found that the government cannot engage in viewpoint discrimination—favoring one or a subset of views on a given subject—without running afoul of freedom of speech. Barring registration of a mark that promotes marijuana usage as “immoral” while allowing one that promotes drug-free school environments is but one of several examples the Court uses to illustrate how these bars allow the government to cherry-pick a desired viewpoint. Similarly, the Court in Tam characterized the now-defunct disparagement bar as a “happy-talk clause,” preventing registration of only those marks that express negative views towards a group. See Tam, 137 S.Ct. at 1765.
Despite the existence of several concurring and partially dissenting opinions, each Justice agreed on striking down the ban on registering “immoral” marks. No limiting construction or alternative reading could possibly allow the government to decide what is moral and yet somehow evade engaging in viewpoint discrimination, the Court found.
However, several of the Justices—Justice Sotomayor most prominently—would have saved the restriction on “scandalous” marks by narrowing its scope. They would read “scandalous” to encompass only marks that offend based on “mode of expression,” that by their nature are obscene—profanity, lewdness, and the like—regardless of the viewpoint being expressed. Thus, under this view, the government could appropriately decide registration while being viewpoint neutral. The majority rejected this narrow reading, finding no support in the statute to redefine “scandalous,” and refused to consider arguments based on the premise that this limitation would only entail some unconstitutional applications. As a result, and as most plainly expressed in Justice Alito’s concurrence, any narrower restriction on “scandalous” mark registration must come through Congress, not the Court.
It will be interesting to track how (if at all) registration of these marks affect the flow of commerce. Brunetti is concerned with registration, not acquisition of trademark rights, after all. Business owners were and are free to use immoral or scandalous material in their marks. Even if registered, the owners of these marks will still have to decide what channels and methods would be most appropriate to reach their target audience. Advertising partners still have to agree to air or publish the purportedly offensive marks. Consumers still have to decide whether to purchase those goods or services. Regardless, the decision clears the way to registration for various marks that previously were rejected, which will give those owners meaningful advantages in enforcing their rights, including an evidentiary presumption of ownership and validity. It also may make it easier for third parties to uncover prior marks when considering new marks to adopt—all of which suggests that there could be a more competitive market going forward for marks that previously could only be protected under common law.
The likely effect of registration on consumer perception of uncouth marks is unclear. As Justice Breyer explained in his concurrence—using a touch of neuroscience—certain swear words and vulgar phrases trigger our brains in different ways than most words. He wrote that these attention-grabbing words are “hard to forget” and may cause disruption to commerce, among other things. In a similar vein, it may become difficult for consumers to distinguish brands that use certain profane words or slight variations of them, given their freestanding emotional impact.
Perhaps the upshot of Brunetti is that trademark registration is a poor fit for regulating morality and social mores. Whether Congress will intercede to address the latent effects this decision has on commerce remains to be seen.
Micah Rappazzo is an associate in the New York City, New York, office of Kirkland & Ellis LLP.
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