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Supreme Court Overturns Statutory Ban on Immoral or Scandalous Trademarks

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Similar to its 2017 ruling striking down a statutory ban on “disparaging” trademarks, on June 24, 2019 the Supreme Court overturned the “neighboring” statutory ban on “immoral or scandalous” trademarks in Iancu v. Brunetti, No. 18-302, 588 U.S. ___ (2019).  In 2011, Erik Brunetti sought to register his mark FUCT with the United States Patent & Trademark Office (“USPTO”).  His application, however, was denied on the grounds that the term was “immoral or scandalous” in violation of Lanham Act Section 2(a), 15 U.S.C. § 1052(a), which bars registration of trademarks that “[c]onsist of or comprise immoral, deceptive, or scandalous matter”.

In a 6-3 decision, the Supreme Court held that the statutory ban on scandalous trademarks was an unconstitutional viewpoint-based form of discrimination that “disfavored certain ideas” in violation of the First Amendment.  The USPTO argued that the disparaging trademark provision, which is also contained in Lanham Act Section 2(a), should be treated differently than the immoral or scandalous trademark provision.  The USPTO asserted that the provision is a “viewpoint-neutral” bar that is a reasonable condition on a government benefit.  The Supreme Court disagreed, finding the provision in violation of the Constitution.

The initial USPTO correspondence refusing registration stated that “[t]o be considered ‘scandalous’, the evidence must show that a mark would be considered shocking to the sense of decency or propriety, giving offense to the conscience or moral feelings, or calling out for condemnation”, or being “disgraceful”, “offensive”, “disreputable”, or “vulgar”. The USPTO went to state that “[a] mark is immoral or scandalous when the evidence shows that a substantial composite of the general public (although not necessarily a majority) would consider the mark to be scandalous in the context of contemporary attitudes and the relevant marketplace.” In its opinion, the Supreme Court explained that the immoral or scandalous trademark provision “on its face 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. The statute favors the former, and disfavors the latter.”

Chief Justice John Roberts and Justices Stephen Breyer and Sonia Sotomayor concurred in part and dissented in part from the opinion, agreeing that the ban on “immoral” trademarks was unconstitutional but arguing that the ban on “scandalous” trademarks was susceptible to an appropriate narrowing construction that would eliminate viewpoint bias (that is, they offend because of their mode of expression, not the ideas they convey).

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