A Temporary (?) Open Season on Four Letter Words at the PTO; Supreme Court Overturns the Lanham Act’s Bar on Registration of Immoral and Scandalous Trademarks

Written by: Rex. A Donnelly

Following on its decision two terms ago that the Lanham Act’s bar on the registration of “disparaging” trademarks violated the First Amendment (Matal v. Tam, 582 U. S. ___ (2017)), the Supreme Court has now struck the related bar on registration of “immoral or scandalous” trademarks.  Both bars infringe the First Amendment because they discriminate against certain viewpoints.  The Court’s decision in Iancu v. Brunetti arose from the U.S. Patent and Trademark Office’s refusal, upheld by the Trademark Trial and Appeal Board (TTAB), to register FUCT as a trademark for clothing.  While the applicant contended the mark was an acronym for “Friends U Can’t Trust” and pronounced F-U-C-T, the USPTO found the mark highly offensive and vulgar as “the equivalent of [the] past participle form of a well-known word of profanity.”

The Court’s earlier Tam decision (relating to the mark “The Slants” for an Asian-American dance-rock band) already made clear that any law disfavoring “ideas that offend” discriminates based on viewpoint and therefore violates the First Amendment.  Looking to dictionary definitions, the Court found, and the Government conceded, that the ordinary meanings of the terms “immoral or scandalous” on their face could encompass material that was shocking or offensive because it expressed an outrageous point of view or a point of view that most members of society reject.  The Government urged a reinterpretation of the statute to restrict the PTO to only refusing marks that are “vulgar”—meaning “lewd,” “sexually explicit or profane” — which it contended would be viewpoint neutral.  Justices Robert, Sotomayer, and Breyer concurred with the majority that the bar on registering “immoral” marks violates the First Amendment, but dissented as to the majority’s view that the term “scandalous” did not support a viewpoint-neutral interpretation.  Because the Lanham Act, as written, failed to draw the line at only lewd, sexually explicit, or profane marks, or marks whose mode of expression is offensive, independent of viewpoint, the majority was unwilling to adopt the interpretation urged by both the Government and the dissent.  To do so, according to the Court, was “not to interpret the statute Congress enacted, but to fashion a new one.”

By expressly stating its decision says “nothing at all” about a statute barring registration of obscene, vulgar, or profane marks, the majority, coupled with the positions taken by the dissenting justices, provides a clear set of guideposts to Congress on how to amend the statute in a way likely be upheld as not offending the First Amendment.  Even if “vulgar” registrations have an uncertain future, owners of at least some formerly unregistrable marks now have an opportunity to apply for registrations that should be sustainable, regardless of any new legislation.  Owners of such marks should not only file immediately, to beat others to the Trademark Office, but also should diligently monitor published marks for potential opposition.

Judge Sotomayer, in her dissent, predicted “unfortunate results” caused by this decision that leaves the USPTO powerless against applications seeking registration of marks containing “the most vulgar, profane, or obscene words and images imaginable.”  Thus, the decision is a clear win for some mark owners, but not for the USPTO, who if it hopes to get relief from a Congress that has proven unable to agree upon anything, may simply be [the past participle form of a well-known word of profanity].