On June 24, 2019, the Supreme Court decided Iancu v. Bruneti. In the 6-3 affirmance, the Court struck down the Trademark Act’s prohibition on the registration of “immoral” or “scandalous” trademarks, Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a). The Court held that such prohibition runs afoul of the First Amendment.
The prohibition of “immoral” or “scandalous” trademarks meant that the Trademark Office would not register marks deemed to be vulgar. To determine whether a mark fits in the category of “immoral” or “scandalous,” the Trademark Office sought to determine whether a “substantial composite of the general public” would find the mark “shocking to the sense of truth, decency, or propriety;” “giving offense to the conscience or moral feelings;” “calling out for condemnation;” “disgraceful;” “offensive;” “disreputable;” or “vulgar.” Vulgarity would need to be evaluated in the context of contemporary attitudes. As for scandalous marks, the evaluation had to be made in the context of the relevant marketplace for the goods or services identified in the application and had to be ascertained from the standpoint of not necessarily a majority, but a “substantial composite of the general public.”
The test for determining whether a mark is immoral or scandalous could result in subjective interpretation and inconsistency: a term can be viewed offensive or “shock the sense of decency” of one person and not be offensive to another. Further, terms may change meanings in different time periods. For example, the term MADONNA for wine was initially refused in 1938 and 1959 being deemed scandalous. But in 2008, the mark registered.
In this case, Eric Brunetti filed a trademark application for the mark FUCT for his clothing line. The Court eloquently describes the mark as “the equivalent of the past participle form of a well-known word of profanity.”
In considering the validity of the FUCT mark, the Trademark Office Examining Attorney determined the mark to be a vulgarity and “therefore unregistrable.” On appeal, the Trademark Trial and Appeal Board determined the mark to be “highly offensive” and “vulgar,” and that it had “decidedly negative sexual connotations.”
Brunetti then appealed to the Court of Appeals, which held that despite the term FUCT being immoral or scandalous, the Trademark Act’s prohibition on the registration of “immoral” or “scandalous” trademarks was an unconstitutional restriction of free speech in violation the First Amendment. Further, the Court of Appeals held that the government does not have a compelling, or even substantial, interest in regulating scandalous and immoral marks. This decision was not a surprise in view of the Supreme Court’s decision in Matal v. Tam (the SLANTS case), which held that the Disparagement Clause in Section 2(a) of the Trademark Act also violates the Free Speech Clause of the First Amendment.
After the decision in the Court of Appeals, the government appealed to the Supreme Court. On June 24, the Supreme Court affirmed the decision, stating that “immoral or scandalous” bar discriminated on the basis of viewpoint and, as such, violated the First Amendment. Justice Kagan, writing for the majority stated that “immoral or scandalous” bar “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. This facial viewpoint bias in the law results in viewpoint discriminatory application.”
As such, in view of the decision in Brunetti, marks comprising or consisting of immoral or scandalous matter should now be registerable at the Trademark Office. Any marks for which prosecution was suspended pending the decision in the Brunetti case should also proceed with examination with no immoral or scandalous refusal. However, aside from brand image issues, there is a concern that marks consisting or comprising of immoral or scandalous matter may still be subject to restrictions or bars to registration in the future. The Supreme Court suggested that Congress could draft a new statute which is narrowly tailored so it does not discriminate on the basis of viewpoint. Should a new statute be enacted, it may be possible that the new statute could effectively bar registration of immoral or scandalous marks. Only time will tell.