The facts are straightforward: Erik Brunetti applied to register the trademark FUCT for millennial street clothes. The USPTO denied registration under Section 2(a) of the Trademark Act (15 U.S.C. § 1052(a)) finding the mark “scandalous” and “immoral.” The USPTO’s decision stood in stark contrast to its other decisions granting registration to the marks FCUK, THE F WORD, and FVCK STREET WEAR, while denying registration to F U, EFFU, and FVCKED for similar goods. On appeal, while the Federal Circuit agreed with the USPTO’s conclusion that FUCT was vulgar and therefore unregistrable, it reversed, concluding that Section 2(a)’s bar on registration of scandalous and immoral trademarks violated the free speech provisions of the First Amendment.
The Brunetti case follows closely on the Supreme Court’s 2017 decision in Matal v. Tam, 137 S. Ct. 1744, which struck down the Lanham Act’s prohibition on registration of “disparaging” trademarks. Tam was a plurality opinion, as all justices agreed that the disparagement prohibition was unconstitutional viewpoint-based discrimination, but no majority agreed on the reasoning as to why.
Writing for the majority in Brunetti, Justice Kagan emphasized that unlike in Tam, the Court has issued a majority opinion holding that the “immoral or scandalous” trademark ban also discriminates on the basis of viewpoint (i.e., disfavors certain ideas) and therefore runs afoul of the First Amendment. The Court rejected the USPTO’s contention that it was possible to save the Lanham Act’s language with a “limiting construction” by reading the terms “immoral” and “scandalous” individually, rather than collectively (as they historically have been interpreted by the USPTO and courts).
Such a narrow interpretation would have “scandalous” interpreted as blocking registrations based on the mode or manner of use of the marks so as to prevent registration of vulgar, lewd, or obscene marks. The Court refused this interpretation of the statute, finding that the term “scandalous” could include marks that both offend by virtue of the ideas they convey and marks that offend by virtue of their mode of expression. The Court observed, “[t]here 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.”
Justice Alito concurred to emphasize, “at a time when free speech is under attack” and “serious viewpoint discrimination is now tolerated…in this country,” that the Court must uphold the principle that the First Amendment does not tolerate viewpoint discrimination and cannot engage in moral relativism. He agreed that the statute could not be fixed without rewriting it, but at the same time noted that Congress is free to adopt a more carefully drafted statute that would preclude the registration of marks containing vulgar or lewd terms “that play no real part in the expression of ideas” and “generally signif[y] nothing except emotion and a severely limited vocabulary” as “the registration of such marks serves to further coarsen our popular culture.”
All nine justices agreed that the “immoral” prohibition could not be saved from unconstitutionality, but some justices wrote separately, dissenting in part to construe “scandalous” as the USPTO had argued, and found that provision constitutional.
Justice Sotomayor, joined by Justice Breyer, bemoaned the floodgates opening to registration of “marks containing the most vulgar, profane, or obscene words and images imaginable.” She argued that the trademark registration system is, by definition, content-based and that registration is equivalent to a government subsidy which can be differentiated from a fundamental right. Registration refusal does not prevent the trademark owner from using their mark; instead they must merely forego the ancillary benefits of registration. She also noted the government’s own interest in not promoting certain kinds of marks. With this in mind, and despite the PTO’s history of reading the terms “scandalous” and “immoral” collectively, she argued that “scandalous” must be given its own non-redundant definition apart from “immoral” and therefore read it to prohibit the registration of obscene, vulgar, and profane marks. Such a reading constitutes “a viewpoint-neutral form of content discrimination that is permissible in the kind of discretionary governmental program or limited forum typified by the trademark-registration system.” Justice Roberts filed a brief concurrence in part and dissent in part acknowledging his agreement with Justice Sotomayor’s reasoning.
Justice Breyer, although largely agreeing with Justice Sotomayor, wrote separately to highlight his own reformulation of First Amendment jurisprudence from his previous concurrences. This analysis turns on whether the restriction at issue “works speech-related harm that is out of proportion to its justifications.” Under this analysis, Breyer concluded that the Lanham Act’s prohibition would not cause much harm to First Amendment interests because businesses are still free to use their marks without penalty and merely lose the benefits of registration.
The separate opinions of Sotomayor, Breyer, and Roberts all incorporate ideas that seemed to be rejected in Tam – whether trademarks constitute commercial or expressive speech, whether trademark registrations constitute governmental or private speech, whether the government has an interest in not promoting certain types of speech – and the justices overall acknowledged that Tam’s reasoning commanded no majority while Brunetti’s majority expressly does not engage or resolve any of those issues.
Whether the efforts of various members of the Court to draw a distinction between discriminating on the basis of viewpoint as opposed to discriminating on the basis of mode of expression has any practical application is also unclear. Wherever academic musing on this distinction may lead, in reality, as evidenced by Justice Alito’s concurrence (since whether one agrees with his observances on language is largely based on one’s place in today’s society and level of education), this distinction seems untenable.
Ultimately, given the USPTO’s glaring inconsistency in its application of the statute and the widespread admission that the statute’s vague terms have not aged well since their 1946 passage, it should come as no surprise that the Court found the remainder of Section 2(a) unconstitutional, consistent with Tam. The burden now shifts to Congress to revise the statute to narrow the language to focus on vulgarity and profanity alone. But given the current Congressional dysfunction, whether and when this might happen is anyone’s guess.
Authored by Julia Anne Matheson and Brendan Quinn