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June 28, 2019

Scandalous Marks? Nothing the Proverbial Bar of Soap Can’t Fix

By Lora A. Brzezynski and Renato Pérez

Earlier this week the United States Supreme Court struck down a century-old provision in the Lanham Act that banned the registration of marks deemed “immoral” or “scandalous.” By a 6−3 vote, the Court found in Iancu v. Brunetti that the provision violated the First Amendment. Given the Supreme Court’s 2017 decision in Matal v. Tam invalidating a ban on registration for disparaging marks, the Brunetti decision comes as no surprise.

In Brunetti, the owner of the FUCT-branded clothing line sought a federal trademark registration to protect his mark. The United States Patent and Trademark Office (USPTO) refused to register the mark under Section 2(a) of the Lanham Act, finding it comprised immoral or scandalous matter in violation of that section.

Writing for the majority, Justice Kagan noted that the statute “does not draw the line at lewd, sexually explicit, or profane marks” but that it actually “covers the universe of immoral or scandalous . . . material.” Iancu v. Brunetti, 588 U.S. __, __ (2019) (opinion of the Court) (slip op., at 9). She further noted that “a law disfavoring ‘ideas that offend’ discriminates based on viewpoint in violation of the First Amendment.” Id. at 8.

Justice Breyer concurred with the majority’s holding that the prohibition to register “immoral” marks violates the First Amendment, but dissented from the majority as applied to “scandalous” marks. He reasoned that the First Amendment harm is limited because trademark owners still can use offensive trademarks, just not register them; writing that “the Government has at least a reasonable interest in ensuring that it is not involved in promoting highly vulgar or obscene speech, and that it will not be associated with such speech.” Iancu v. Brunetti, 588 U.S. __, __ (2019) (opinion of BREYER, J.) (slip op., at 6). Echoing this comment, Chief Justice Roberts observed: “The First Amendment protects the freedom of speech; it does not require the Government to give aid and comfort to those using obscene, vulgar, and profane modes of expression.” Iancu v. Brunetti, 588 U.S. __, __ (2019) (opinion of ROBERTS, C.J.) (slip op., at 2).

Justice Sotomayor raised the likelihood of a dim outlook, remarking that “the Court’s decision … will beget unfortunate results” anticipating a rush to register offensive trademarks to which “the Government will have no statutory basis to refuse (and thus no choice but to begin) registering marks containing the most vulgar, profane, or obscene words and images imaginable.” Iancu v. Brunetti, 588 U.S. __, __ (2019) (opinion of SOTOMAYOR, J.) (slip op., at 1). Justice Sotomayor’s expected flood of vulgar applications appears to be correct. Indeed, in anticipation of the decision, hundreds of applications seeking trademark registrations of different variations of just the four-letter “f” word have been filed. Some of these applications were suspended pending the Supreme Court’s decision in this case.

It is unclear, however, whether the remainder of Justice Sotomayor’s prediction will prove correct. We suspect the USPTO will find other ways to refuse registration of these type of marks, including for lack of use. In fact, Justice Alito in his concurring opinion suggested a legislative remedy. That is, Congress could use the proverbial “bar of soap” and enact “a more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas.” Indeed, Justice Alito went on to state that “the mark in question in [Brunetti] could be denied registration under such a statute.” Iancu v. Brunetti, 588 U.S. __, __ (2019) (opinion of ALITO, J.) (slip op., at 2).

It also is worthwhile noting that this opinion will likely not be the last word on this subject, especially if Congress elects to amend the Lanham Act. Further, four Justices voiced some degree of concern about scandalous marks being granted registration. That certainly suggests there is room for further interpretation in the future and creative ways to “clean up” foul language and prevent it from being registered. In the meantime, however, we’ll continue to monitor whether any boundaries will be set by the USPTO or Congress.

Disclaimer: Drinker Biddle & Reath attorneys represented five Native American individuals seeking to cancel the Washington, D.C. football team’s disparaging trademark registrations in Blackhorse v. Pro-Football, Inc. The case was withdrawn once the Supreme Court rendered the legal issue moot in Matal v. Tam.

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