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Trademark Law Restricting ‘Scandalous’ Speech Found Unconstitutional

June 24, 2019 by Dan McCue
Visitors line up to enter the Supreme Court on Capitol Hill in Washington, Monday, June 24, 2019. (Photo by Dan McCue)

WASHINGTON – The U.S. Supreme Court struck down a section of the federal trademark law that prohibited businesses from registering marks that some might see as scandalous or immoral.

The ruling is a victory for the fashion brand FUCT, and spells the end of a rule the U.S. Patent and Trademark Office used to reject about 150 trademark applications a year between 2005 and 2015.

In announcing the decision of the court majority, Justice Elena Kagan said “the most fundamental principle of free speech law is that the government can’t penalize or disfavor or discriminate against expression based on the ideas or the viewpoints it conveys.

“The ban on ‘immoral’ and ‘scandalous’ trademarks does just that,” she said.

The underlying case involves a Los Angeles artist and entrepreneur named Erik Brunetti, who sells t-shirts and other apparel online under the four-letter brand “FUCT,” which he claims is an acronym for “Friends U Can’t Trust.”

In interviews Brunetti has said his 19-year-old clothing line is all about challenging “the assumptions of society, the government and accepted wisdom.”

But as he prepared to have his case heard by the high court last spring, the message on his official website was both more succinct and more challenging. “Fuct is free speech,” said red and white letters before white background. “Free speech is fuct.”

Brunetti founded his clothing line in 1990, but it wasn’t until 11 years later that two other individuals filed an intent-to-use application for the mark FUCT, assigning the application to Brunetti.

The examining attorney at the Patent and Trademark Office refused to register the mark under Section 2(a) of the Lanham Act, finding that because the pronunciation of “fuct” sounds like a vulgar word, the requested trademark was comprised as immoral or scandalous matter in violation of the section.

Brunetti requested reconsideration and appealed to the Trademark Trial and Appeal Board, which affirmed the examining attorney’s refusal to register the mark.

The Federal Circuit later found that while the board did not err in concluding the mark should be excluded under Section 2(a) of the Lanham Act, that section’s bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech.

But in a petition for writ filed last September, the Solicitor General argued the case merited U.S. Supreme Court review because the Federal Circuit’s decision invalidated an act of Congress.

The Solicitor General’s office went on to say that while Brunetti has a right to use the scandalous mark in commerce, he has no comparable right to require the government to register the term or inscribe the term on the Federal Register.

On Monday, before more than 100 spectators in the Supreme Court’s chambers, and her colleagues, Kagan sought to explain why the provision simply doesn’t meet constitutional muster.

“‘The ‘immoral or scandalous’ bar allows trademark registration when a mark’s message conforms with society’s sense of decency or morality,” she said. ‘But it prohibits any mark expressing a contrary view — when it goes against that societal sense.

“That’s exactly the kind of discrimination against ideas that the First Amendment prohibits,” she said.

Sensing she had gotten off solid ground and was beginning to sound a little abstract, Kagan then offered a few examples.

“The Patent and Trademark Office rejected as ‘immoral or scandalous’ trademarks for ‘Marijuana Cola’ and “You can’t spell healthcare without THC,’  because the agency believed they glamorized drugs,” she said.

“But at the same time, the office allowed trademarks with sayings like, ‘Say no to drugs’ and ‘Dare to resist drugs,’ in other words, marks that expressed an anti-drug message,” she said.

Throughout her delivery of the court’s opinion, Kagan’s colleagues listened respectfully.

Justice Clarence Thomas leaned back in his chair, his eyes closed, while Justice Stephen Breyer seemed to take an intense interest in the papers before him, his fingers criss-crossing his high forehead like a spider web. And Justice Ruth Bader appeared to silently contemplate every word.

But when Kagan got to the “You can’t spell healthcare …” part of her remarks, Justice Neil Gorsuch openly laughed and both Justice Brett Kavanaugh and Chief Justice John Roberts fought to suppress impish smiles.

During oral arguments on the case in April, the solicitor general’s office, speaking on behalf of the Trump administration, had attempted to argue trademark law provision at issue actually said more than the words on the page would indicate.

According to the government, the provision should be read to cover only trademarks that are lewd, sexually explicit or profane.

Kagan said that was just a bit too far for the court to go.

“Although we try to interpret statutes to avoid constitutional problems, we can’t simply rewrite Congress’s words,” she said.

While the justice conceded the provision may apply to all the things the solicitor general said, “the statute does not draw the line” there, Kagan said.

The high court’s ruling means that the people and companies behind applications that previously failed as a result of the scandalous or immoral provision can re-submit them for approval. And new trademark applications cannot be refused on the grounds they are scandalous or immoral.

The justices’ ruling was not unexpected. In 2017, the justices unanimously invalidated a related provision of federal law that told officials not to register disparaging trademarks, finding the restriction violated the First Amendment. 

In that case, an Asian-American rock band sued after the government refused to register its band name, “The Slants,” because it was seen as offensive to Asians.

A spokesman for the patent office said it is reviewing the decision.

Justice Samuel Alito Jr. wrote a concurring opinion. Chief Justice Roberts, Breyer and Sotomayor also filed separate concurring opinions in which they agreed in part and dissented in part from the majority’s ruling.

The case is Iancu v. Brunetti, 18-302.

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