[co-author: Chandler Mores]

Supreme Court Again Strikes Down Trademark Restrictions

Yesterday the United States Supreme Court announced its decision in Iancu v. Brunetti, holding that prohibiting trademarks that consist of or comprise immoral or scandalous matter(1) violates the First Amendment. The majority, written by Justice Kagan, centered its finding on the fact that the Act’s “immoral or scandalous” criterion is viewpoint-based which results in viewpoint-discriminatory application. In other words, a Patent and Trademark Office (“PTO”) Examiner must issue registrations from an impartial perspective, not from their own judgment. For example, a PTO trademark examiner would allow marks that support society’s ideas of decency and morality, but reject marks that do not align with those concepts.

The defendant in the case, Brunetti, founded a clothing line called “Fuct,” which was previously denied trademark protection on the grounds that it did not align with the concepts of decency and morality. Brunetti appealed the case to the PTO’s Trademark Trial and Appeal Board (“TTAB”), where again his trademark FUCT was found vulgar and offensive, and denied registration.

What Does This Mean For Our Clients?

Many industries will now be able to federally register trademarks that were otherwise not available to them. However, how much free reign will trademark applicants actually have in registering their marks? The TTAB initially denied Brunetti’s trademark on the grounds that it was highly offensive, vulgar, and had “negative sexual connotations” that communicated “misogyny, depravity, [and] violence.”(2) With this decision, some of the most offensive and racist words may now be capable of trademark protection, once again broadening the pool of source-identifying words ripe for protection.(3)

A Slippery Slope

Some of the justices, however, worry that this decision is a very slippery slope, as Brunetti will undoubtedly lead to “a rush to register trademarks for even the most viscerally offensive words and images that one can imagine.”(4) As our society continues to become more politically-correct and hyper-politicized, there is a high likelihood that more challenges will arise to registered trademarks that use profane and vulgar marks. In oral argument, Justice Breyer raised concerns about trademarking the most offensive racial slurs, and to that point, marginalized communities and those who self-identify as a member of a minority group, who will be negatively affected by the Brunetti holding.

We anticipate seeing future cases asking for the clarification of trademarks with profanity and racial epithets, given the lack of distinction between the two in the opinion. Justice Alito argued that Congress could further address this issue by creating a statute that instead bans registering marks that contain vulgar terms which do not really express an idea. With a potential statute like this in place, the PTO would allegedly be reviewing trademarks on a neutral basis. In response, Justice Breyer believed the rejection of highly vulgar or obscene trademarks does not harm the First Amendment, and believed that the government may have an interest in protecting children from such words.(5) Lastly, Justice Sotomayor argued that the PTO should be able to restrict certain lewd words or “swear” words. (6) Brunetti may have won the battle, but it seems certain that the war against vulgar trademarks is far from over.

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1. 15 U.S.C. §1052(a).
2. No. 18-302, slip op. at 3 (U.S. June 24, 2019).
3. See id, slip op. at 7-8 n.5 (Sotomayor, J., concurring in part, dissenting in part).
4. Id., slip op. at 18.
5. Id., slip op. at 5, 8 (Breyer, J., concurring in part, dissenting in part).
6. Id., slip op. at 6 (Sotomayor, J., concurring in part, dissenting in part).