In a major trademark ruling issued on June 24, 2019, the Supreme Court struck down the federal ban against trademark registrations for "immoral or scandalous" material as an infringement of First Amendment rights. That case, Iancu v. Brunetti, arose in connection with the attempted trademark registration by the streetwear brand "FUCT."

Background 

The stage for the Brunetti decision was set two years ago, when the Court struck down a similar ban under the federal Lanham Act against "disparaging" (racist) trademarks in the case of Matal v. Tam. The Tam case involved a band named "The Slants," and the decision also controlled the dispute involving the NFL's Washington Redskins. The Court in Tam concluded that the restriction on disparaging marks constituted viewpoint discrimination, a restriction that is rarely – if ever – justified under the free speech protections guaranteed by the First Amendment.

The Supreme Court's Ruling 

In analyzing the current case, Justice Kagan writing for the majority expressly acknowledged this precedent at the outset and held that, "[t]he rejected marks express opinions that are, at the least, offensive to many Americans. But as the Court made clear in Tam, a law disfavoring 'ideas that offend' discriminates based on viewpoint, in violation of the First Amendment." The opinion in Brunetti embraces the right to free speech enshrined in the Constitution, and permits the registration of trademarks that are scandalous even if others may find those marks to be objectionable or offensive. 

One expected ramification of the decision will be the application for, and proliferation of, marks that would have previously been rejected by the PTO as offensive. Companies that have used such names without the benefits conferred by federal trademark protection, and those who have considered but deferred using such marks as a source identifier, should be poised to act quickly regarding use and registration of such marks in order to obtain the benefits conferred by federal registration. Of course the risks and imperatives which inform companies whether to adopt scandalous trademarks may still militate against using immoral or scandalous words as source identifiers or risk alienating their customers. 

In concurring opinions several justices anticipated – and objected to – this rush to file for offensive trademarks. Those Justices expressly noted that the language of the Lanham Act could have been split, with the ban on immoral material being rejected as unconstitutional, while the ban on scandalous trademarks could have been read as a viewpoint neutral ban on "modes of expression." In a dissent Justice Sotomayor adopted this view and noted that a limited restriction covering only "obscene, vulgar or profane" marks in their mode of expression would be both acceptable and a far better alternative than, "permit[ting] a rush to register trademarks for even the most viscerally offensive words and images that one can imagine." The dissents also shared the view that while the First Amendment would protect the actual use of the mark in question, "the government need not... be forced to confer on Brunetti's trademark (and some more extreme) the ancillary benefit of trademark registration." 

The dissents in Brunetti also offered a clear path to constitutionally permissible legislation; namely a narrow prohibition on "obscene, vulgar or profane... modes of expression." In addition to the three dissents, the majority opinion also appears to suggest a narrowly tailored approach could possibly pass constitutional muster. The questions for clients following Brunetti may be (i) whether the current [or any future] Congress can work collaboratively to write and pass such legislation and, if so, (ii) what would become of the obscene trademarks accepted by the PTO in the aftermath of the Brunetti decision.

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Pryor Cashman also co-authored the amicus brief filed by NYIPLA that argued that the ban against trademark registrations for "immoral or scandalous material" in the Iancu v. Brunetti case was unconstitutional.

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