Procedural History and Background
The USPTO refused to register Brunetti’s mark, finding under section 2(a) of the Lanham Act, the mark comprised immoral or scandalous matter (the pronunciation of “fuct” sounds like a vulgar word) in violation of that section.
The U.S. Court of Appeals for the Federal Circuit found that while the USPTO did not err in concluding the mark should be excluded under section 2(a) of the Lanham Act, that section’s bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech.
In 2017, the Supreme Court had found that the provision in Lanham Act section 2(a) prohibiting the registration of “disparaging” marks was in violation of the First Amendment’s free speech clause. See Matal v. Tam, 137 S. Ct. 1744 (2017). In Matal, a musical band comprising members of Asian descent sought to register the mark “THE SLANTS” but was denied on grounds the mark would be disparaging to people of Asian descent. The Supreme Court applied a two-part test to the prohibition:
1. If a trademark registration bar is viewpoint-based, it is unconstitutional; and
2. the disparagement bar was viewpoint based.
A prohibition is viewpoint-based when, “[o]ther things being equal, . . . [the] government allows one message while prohibiting the messages of those who can reasonably be expected to respond.” Rosenberger v. Rector & Visitors of the Univ. of Va., 515 U.S. 819, 894 (1995). On review, the Court found that marks referring to people of Asian descent perceived positively were allowed, while marks perceived negatively were denied, making the disparagement bar viewpoint-based.
The Supreme Court’s Decision Iancu v. Brunetti
Returning to Brunetti’s mark, the Supreme Court first addressed whether immoral and scandalous prohibitions were viewpoint-based. The Court looked at each prohibition separately in light of various dictionary definitions.
The Court found that the Lanham Act would permit registration of marks that champion society’s sense of rectitude and morality, but not marks that denigrate those concepts. Likewise, marks were rejected as “scandalous” when they give “offense to the conscience or moral feelings”; “excite reprobation”; or “call out condemnation.” The Court determined that “the Lanham Act allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety” and held:
Put the pair of overlapping terms together and the statute, on its face, distinguishes between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them; those inducing societal nods of approval and those provoking offense and condemnation. The statute favors the former and disfavors the latter. “Love rules”? “Always be good”? Registration follows. “Hate rules”? “Always be cruel”? Not according to the Lanham Act’s “immoral or scandalous” bar.
The facial viewpoint bias in the law results in viewpoint-discriminatory application.
Given the prior precedent, the government foresaw the likelihood that these prohibitions would be struck down as well. The government asked the Court to prohibit marks that are not viewpoint-based such as “marks that are offensive [or] shocking[ ] because of their mode of expression, independent of any views that they may express.” The Court refused to grant the government’s request to narrow the prohibition. “The statute as written does not draw the line at lewd, sexually explicit, or profane marks. Nor does it refer only to marks whose ‘mode of expression,’ independent of viewpoint, is particularly offensive.”
It was this denial of the government’s request to create a new judicial threshold that drew the dissenting opinions of Chief Justice Roberts, Justice Breyer, and Justice Sotomayor. Justice Sotomayor’s dissenting opinion argued that the “scandalous” prohibition could be judicially narrowed to allow the USPTO to clarify the prohibition to a non-viewpoint-based threshold such as “obscene, indecent, or profane language” barred from the radio.
Those concerned with judicially maintaining the law can find some solace in the fact that at least three justices dissenting in this trademark case were willing to contemplate a new judicially created threshold to the Lanham Act’s “scandalous” prohibition. On the other hand, a majority was unwilling to consider a new threshold not found in the “statute as written.” Thus, the uncertainty remains at best for those relying on judicially created rules.
However, presently it seems for the USPTO that they must wait for congressional action to revise the current prohibitions to a non-viewpoint-based threshold. The takeaway is that now is the time for the producers of The Good Place to begin registering trademarks for “What the fork?” T-shirts and coffee mugs. And, at least for a limited time, the USPTO may willing to consider registrations that are “obscene, indecent, or profane.”
Don J. Cox, Jr. is principal of the Law Offices of Donald Cox, LLC, in Princeton, New Jersey. He focuses his practice on intellectual property law transaction and litigation.