Rejection of FUCT Registration Violates First Amendment, Supreme Court Says
(June 24, 2019) The Supreme Court struck down the U.S. Patent and Trademark Office (“USPTO”) ban against registering marks that are “immoral” or “scandalous” because the restriction violates the First Amendment.
The court found the USPTO erred in denying a trademark for FUCT for clothing. Under the Lanham Act, the USPTO may not register marks that consist or comprise immoral or scandalous matter. The PTO examining attorney found FUCT “a total vulgar.” A trademark owner may still use a mark in commerce and enforce it against infringers even without a registration. Federal registration puts infringers on notice and provides other benefits.
The majority of the Supreme Court justices said the words “immoral” and “scandalous” should be read together. When combined, the words create a bar that is not content neutral and therefore violates the First Amendment. “[T]he ‘immoral or scandalous’ bar is substantially overbroad,” Justice Kagan wrote. “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.”
In a concurring opinion, Justice Alito wrote the “decision does not prevent Congress from adopting a more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas. The particular mark in question in this case could be denied registration under such a statute.”
Chief Justice Roberts concurred and dissented in part with the decision. Whether marks can be registered does not affect the extent to which their owners may use them in commerce to identify goods. “No speech is being restricted; no one is being punished,” he wrote. The government has an interest in not associating itself with trademarks whose content is obscene, vulgar, or profane. “The First Amendment protects the freedom of speech; it does not require the Government to give aid and comfort to those using obscene, vulgar, and profane modes of expression.”
Justice Sotomayor would have allowed the ban by restricting the definition of “scandalous” to address only obscenity, vulgarity, and profanity. Such a construction would make the Lanham Act’s prohibition “a reasonable, viewpoint-neutral restriction on speech.” She said trademark registration is a helpful system, “but it is one that the Government is under no obligation to establish and that is collateral to the existence and use of trademarks themselves. There is no evidence that speech or commerce would be endangered if the Government were not to provide it at all.”
Iancu v. Brunetti, U.S. Supreme Court No. 18-302, issued June 24, 2019.