December 10, 2019 Top Story

Supreme Court Strikes "Immoral or Scandalous" Trademark Bar

Dissenting opinions may foreshadow legislative change

By C. Thea Pitzen

Respondent Eric Brunetti founded a clothing line named—and using the trademark—FUCT. But the U.S. Patent and Trademark Office (PTO) refused to register the mark based upon the Lanham Act’s prohibition against registration of immoral or scandalous marks.

iStockphoto by Getty Images

So Brunetti brought a facial challenge to the Lanham Act’s so-called “‘immoral or scandalous’ bar.” In Iancu v. Brunetti, the U.S. Supreme Court found that the bar indeed violates the First Amendment. Some ABA Section of Litigation leaders opine that the decision may pave the way for legislative change.

Court’s Decision Followed Free Speech Precedent

The Court noted that “just two Terms ago” in Matal v. Tam, it “declared unconstitutional the Lanham Act’s ban on registering marks that ‘disparage’ any ‘person[], living or dead.” Though the Tam Court was divided between two opinions, “all the Justices agreed on two propositions”: first, that “if a trademark registration bar is viewpoint-based, it is unconstitutional” and, second, that “the disparagement bar [in Tam] was viewpoint-based.” The Court here likewise concluded that the Lanham Act’s “immoral or scandalous” bar was viewpoint-based and accordingly violated the First Amendment and “must be invalidated.”

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