Case 3.1

Ref pg 29 - The Legal and Regulatory Environment of Business

Respondent Erik Brunetti sought federal registration of the trademark FUCT. The Patent and Trademark Office (PTO) denied his application under a provision of the Lanham Act that prohibits registration of trademarks that consist of or comprise immoral or scandalous matter. Brunetti brought a First Amendment challenge to the “immoral or scandalous” bar in the Federal Circuit.

The federal circuit invalidated the provision. The Supreme Court affirmed. Justice Kagan delivered the opinion of the Court, in which Justices Thomas, Ginsburg, Alito, Gorsuch, and Kavanaugh joined. Justice Alito filed a concurring opinion. Justices Roberts and Breyer filed opinions concurring in part and dissenting in part. Justice Sotomayor filed an opinion concurring in part and dissenting in part, in which Justice Breyer joined.

KAGAN, J.:

Two Terms ago, in Matal v. Tam, 582 U.S. (2017), this Court invalidated the Lanham Act’s bar on the registration of “disparag[ing]” trademarks. 15 U.S.C. 1052(a). Although split between two non-majority opinions, all Members of the Court agreed that the provision violated the First Amendment challenge to a neighboring provision of the Act, prohibiting the registration of “immoral[] or scandalous” trademarks. We hold that this provision infringes the First Amendment for the same reason: It too disfavors certain ideas.

Respondent Erik Brunetti is an artist and entrepreneur who founded a clothing line that uses the trademark FUCT. According to Brunetti, the mark (which functions as the clothing’s brand name) is pronounced as four letters, one after the other: F-U-C-T… But you might read it differently and, if so, you would hardly be alone… To determine whether a mark fits in the [prohibited] category, the PTO asks 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.”

Both a PTO examining attorney and the PTO’s Trademark Trial and Appeal Board decided that Brunetti’s mark flunked the test. The attorney determined that FUCT was “a total vulgar” and “therefore[] unregisterable.”…

On review, the Board concluded: “Whether one considers [the mark] as a sexual term, or finds that [Brunetti] has used [the mark] in the context of extreme misogyny, nihilism or violence, we have no question but that [the term is] extremely offensive.”

This Court first considered a First Amendment challenge to a trademark registration restriction in Tam, just two Terms ago. There, the Court declared unconstitutional the Lanham Act’s ban on registering marks that “disparage” any “person[], living or dead.” …

The Justices thus found common ground in a core postulate of free speech law: The government may not discriminate against speech based on the ideas or opinions it conveys….

Viewpoint discrimination doomed the disparagement bar. If the “immoral or scandalous” bar similarly discriminates on the basis of viewpoint, it must also collide with our First Amendment doctrine. The Government does not

argue otherwise…

So the key question becomes: Is the “immoral or scandalous” criterion in the Lanham Act viewpoint-neutral or viewpoint-based? It is viewpoint-based…

And once the “immoral or scandalous” bar is interpreted fairly, it must be invalidated… Once we have found that a law “aim[s] at the suppression of” views, why would it matter that Congress could have captured some of the same speech through a viewpoint-neutral statute?

But in any event, the “immoral or scandalous” bar is substantially overbroad. There are a great many immoral and scandalous ideas in the world (even more than there are swearwords), and the Lanham Act covers them all. It therefore violates the First Amendment. We accordingly affirm the judgment of the Court of Appeals. It is so ordered. KEY POINTS

Trademarks may be protected by federal law known as the Lanham Act.

View-point discrimination violates the First Amendment.

The Lanham Act’s bar against immoral and scandalous marks constitutes view-point discrimination and, as such, violates the First Amendment.

As you read the excerpt from Iancu v. Brunetti, note the reference to the Matal v. Tam case. In Tam, the court considered the constitutionality of registering a “disparaging” mark, which was prohibited by the Lanham Act. In that case, Simon Shiao Tam, the founder of the dance-rock band “THE SLANTS,” sought to register the name of the band. Tam was aware that “slants” has been used a slur against Asians and, by using the term, he was endeavoring to reclaim it as an exercise in empowerment. The PTO ruled against him, but the Supreme Court subsequently held unanimously that the disparagement clause violated the First Amendment. As such, by denying registration, the PTO engaged in illegal viewpoint discrimination. The Court stated that the disparagement clause: “violates the Free Speech Clause of the First Amendment. It offends a bedrock First Amendment principle: Speech may not be banned on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudent is that we protect the freedom to express ‘the thought that we hate.’” Matal v. Tam, 137 S. Ct. 1744, 1764 (2017).