United States: Supreme Court Strikes Down Bar To Registration Of "Immoral" Or "Scandalous" Trademarks

Last Updated: July 10 2019
Article by Julia Matheson and Brendan C. Quinn

Today the US Supreme Court announced its opinion in Iancu v. Brunetti, holding that the Lanham Act's provisions barring the registration of "scandalous" or "immoral" trademarks are unconstitutional under the First Amendment.

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.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Skadden, Arps, Slate, Meagher & Flom (UK) LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Skadden, Arps, Slate, Meagher & Flom (UK) LLP
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions