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Iancu v. Brunetti

Bar on Registration of “Immoral or Scandalous” Trademarks is Unconstitutional

Iancu v. Brunetti, __ U.S. ___, 2019 WL 2570622 (June 24, 2019) (KAGAN, J. (joined by Thomas, Ginsburg, Alito, Gorsuch, Kavanaugh, J.J.); Concurrence by Alito, J.; CIP/DIP by Roberts, C.J.; CIP/DIP by Breyer, J.; CIP/DIP by Sotomayor, J. (joined by Breyer, J.)) (Fed. Cir.: Dyk (concurring), MOORE, Stoll) (TTAB) (5 of 5 stars)

Supreme Court holds that the Lanham Act’s bar on “immoral[ ] or scandalous” trademarks, 15 U.S.C. § 1052(a), violates the First Amendment due to viewpoint discrimination, and affirms the Federal Circuit’s compatible determination (877 F.3d 1330 (Fed. Cir. 2017)). The opinion discusses the plurality opinions in Tam, 137 S. Ct. 1744 (2017), and notes that the “found common ground” that “the government may not discriminate against speech based on the ideas or opinions it conveys.” Op. at 4. It then analyzes the Lanham Act’s “immoral or scandalous” criterion and finds it viewpoint-based on its face, noting numerous instances where the PTO rejected some marks as immoral/scandalous while approving others, where the two sets of marks differed in the ideas being expressed. It rejects the Government’s proposal that the statute could be interpreted in a viewpoint-neutral manner, i.e., to address only marks “offensive or shocking to a substantial segment of the public because of their mode of expression independent of any views that they may express.” Id. at 8. “[W]e cannot accept the Government’s proposal, because the statute says something markedly different.” Id. at 9. In a footnote, the opinion rejects Justice Sotomayor’s proposal to interpret “scandalous” in such a way because the term is not ambiguous. Id.

Alito concurrence: Justice Alito expresses concern that “free speech is under attack” today, but notes that 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,” and notes that Mr. Brunetti’s mark (“FUCT”) “could be denied registration under such a statute.” Alito concur. at 1–2.

Roberts CIP/DIP: Chief Justice Roberts notes that historically the PTO has read the categories “immoral” and “scandalous” as a unitary bar, but proposes that they could be split apart. He agrees with the majority that “immoral” is not susceptible of a narrowing construction to eliminate viewpoint bias, but agrees with Justice Sotomayor that “scandalous” could be. He also expresses the view that “refusing registration to obscene, vulgar, or profane marks does not offend the first amendment.” Roberts CIP/DIP at 2.

Breyer CIP/DIP: Justice Breyer agrees with Justice Sotomayor that “scandalous” could be interpreted to “refer only to certain highly ‘vulgar’ or ‘obscene’ modes of expression.” He believes that the Government could deny registration to the “FUCT” mark under such a construction, but differs from Justice Sotomayor in his reasoning of why. His opinion lays out an analysis with “less emphasis on whether the statute at issue should be categorized as an example of ‘viewpoint discrimination,’ ‘content discrimination,’ ‘commercial speech,’ ‘government speech,’ or the like[,]” and instead uses “this Court’s speech-related categories not as outcome-determinative rules, but instead as rules of thumb.” Breyer CIP/DIP at 2.

Sotomayor CIP/DIP: Justice Sotomayor warns of “unfortunate results” in the Court’s decision, and expresses concern that it deprives the Government of any means to refuse registration to “marks containing the most vulgar, profane, or obscene words and images imaginable.” Sotomayor CIP/DIP at 1. She would have reversed the Federal Circuit and denied registration to Mr. Brunetti, reasoning that the statutory bar on registration of “scandalous” marks could be narrowed to address only obscenity, vulgarity, and profanity.

KEYWORDS: TRADEMARK; FIRST AMENDMENT; VIEWPOINT-BASED