Supreme Court Strikes down Prohibition on Registering Immoral or Scandalous Trademarks

| Ashley C. MoralesAdam Powell


Before the United States Supreme Court (Opinion by Justice Kagan) on Writ of Certiorari to the United States Court of Appeals for the Federal Circuit.

Summary:  The Lanham Act’s prohibition on registering immoral or scandalous trademarks violates the First Amendment because it discriminates on the basis of viewpoint.

Designer Erik Brunetti sought to register the trademark “FUCT.”  The USPTO denied the application because 15 U.S.C. 1052(a) prohibits registering trademarks that include immoral or scandalous matter.  Brunetti challenged the “immoral or scandalous” bar in section 1052(a).  The Federal Circuit held that provision violated the First Amendment.

The Supreme Court affirmed.  In an earlier Supreme Court case, Matal v. Tam, the Supreme Court held a ban on registering trademarks that disparage persons was unconstitutional because it was based on viewpoint.  The Supreme Court applied Matal and held that the “immoral or scandalous” bar was similarly unconstitutional because it discriminates on the basis of viewpoint.  The statute, on its face, distinguished between ideals aligning with conventional societal norms, and those that defy society’s sense of decency, which resulted in a viewpoint-discriminatory application of the law.  Thus, the provision violated the First Amendment.

Justice Alito concurred, but argued the decision does not prevent Congress from adopting a more carefully crafted statute to preclude the registration of marks containing vulgar terms.  Chief Justice Roberts dissented in part, agreeing that the term “immoral” cannot be given a narrow construction to eliminate viewpoint bias, but arguing that the term “scandalous” could be construed narrowly to eliminate viewpoint bias.

Editor: Paul Stewart