Supreme Court Decides Iancu v. Brunetti

On June 24, 2019, the United States Supreme Court decided Iancu v. Brunetti, No. 18-302, holding that the Lanham Act’s prohibition on registering federal trademarks that are “immoral” or “scandalous” violates the First Amendment.

The Lanham Act prohibits registering a trademark that is “immoral . . . or scandalous.” 15 U.S.C. § 1052(a). The Patent and Trademark Office (PTO) implemented this provision by denying registration if 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.”

Erik Brunetti sought to register FUCT as a trademark, the name of his clothing line. Brunetti pronounces the brand as each individual letter, spelling the mark: F-U-C-T. But as stated at oral argument, others may read it as “the equivalent of [the] past participle of a form of a well-known word of profanity.” The PTO rejected Brunetti’s request based on § 1052(a), reasoning the mark was vulgar and highly offensive. The Federal Circuit struck down the statute as facially unconstitutional under the First Amendment.

The Supreme Court affirmed, holding that the statute violates the First Amendment, because it is a viewpoint-based restriction that is substantially overbroad. The Court noted that “[t]here are a great many immoral and scandalous ideas in the world (even more than there are swearwords), and the Lanham Act covers them all.” As a result, it violates the First Amendment. The Court rejected an effort by the PTO to interpret the statute as only refusing to register marks that are “vulgar,” but the Court declined to do so, concluding that would result in rewriting the statute as opposed to interpreting it.

Justice Kagan delivered the opinion of the Court, in which Justices Thomas, Ginsburg, Alito, Gorsuch, and Kavanaugh joined. Justice Alito filed a concurring opinion. Chief Justice Roberts and Justice Breyer filed opinions concurring in part and dissenting in part. Justice Sotomayor filed an opinion concurring in part and dissenting in part, which Justice Breyer joined.