Who Decides What is Too Scandalous? The Supreme Court and Scandalous Trademarks.

Miranda Walker*

I.  Introduction

June 24, 2019, would herald the end of Erik Brunetti’s (Brunetti) nearly thirty-years worth of fighting with the Patent and Trademark Office (PTO) to get his brand name trademarked.  Samuel Hine, How O.G. Streetwear Brand FUCT Took a Free Speech Case All the Way to the Supreme Court, GQ (Jan. 30, 2019), https://www.gq.com/story/fuct-erik-brunetti-supreme-court-case.  FUCT, is nominally an initialism of the phrase “friends you can’t trust,” and the brand name of Brunetti’s clothing line.  Id.  Brunetti acknowledges that his clothing brand’s name may be a bit confusing and even embraces the confusion by stating: “We wanted people to question the pronunciation of it when they looked at the logo.”  Id.  However, that tongue-in-cheek attitude towards brand creation did not serve Brunetti well when he attempted to register the brand name FUCT as a trademark.  In Re Brunetti, 85310960, 2014 WL 3976439, at *1 (Trademark Tr. & App. Bd. Aug. 1, 2014) (Brunetti’s appeal of the PTO’s initial denial of his trademark was rejected).

The Lanham Act serves as the PTO’s guide for administering trademarks.  Lanham Act, 15 U.S.C. § 1051 (2012).  The language of the Lanham Act states that trademark protections are not to be extended to trademarks that, among other things, “[c]onsist[] of or comprise[] immoral, deceptive, or scandalous matter.” Lanham Act, 15 U.S.C. § 1052(a) (2012).  Each time Brunetti attempted to register FUCT as a trademark, his application was denied on the grounds of it being vulgar and offensive.  Iancu v. Brunetti, 139 S. Ct. 2294, 2298 (2019).  After years of fighting, the Supreme Court issued a ruling addressing the constitutionality of the Lanham Act’s provision that the PTO used to deny Brunetti’s brand of the benefits of a registered trademark.  Hine, supra.

II.  Tam and the Brunetti Decision

Following the Court’s 2017 decision of Matal v. Tam, Brunetti had reason to believe the Court would rule in his favor.  See Matal v. Tam, 137 S. Ct. 1744, 1747–48 (2017).  In Tam, the Court reviewed the PTO’s refusal to grant trademark protection to Tam’s band name, “The Slants,” on the basis that its name was disparaging to people of Asian descent.  Id. at 1751.  The Court held that the “disparagement clause” of the Lanham Act was a viewpoint-based restriction and therefore, was invalid under the First Amendment of the United States Constitution.  See id. at 1762.  Justice Alito stated that the disparagement clause “[o]ffends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”  Id. at 1751.

Subsequently, the Court used the same reasoning in Iancu v. Brunetti when it held that the PTO’s ban on “immoral and scandalous matter” was unconstitutional.  See Iancu v. Brunetti, 139 S. Ct. 2294, 2298–99 (2019).  Prior to Brunetti, the PTO interpreted § 1052(a) of the Lanham Act to ban “immoral and scandalous matter” and  functionally treated it as a single joint clause; much like its treatment of the disparagement clause that was at issue in Tam.  Id. at 2298; see Tam 137 at 1751.  The issue in Brunetti boiled down to whether the “immoral or scandalous” clause of the Lanham Act was a “viewpoint-neutral or viewpoint-based” distinction.  Brunetti, 139 S. Ct. at 2299.  The PTO’s internal guidelines for determining if a proposed trademark violated § 1052(a) considered whether a large section of the general public might find the trademark “shocking,” offensive to conscience or morals, condemnable, or “vulgar.”  Id. at 2298.  The Court found that these guidelines are inherently viewpoint-based because they favor the morals of the majority over the morals of the outliers.  Id. at 2300.  If a “PRAISE THE LORD” bumper sticker is approved, but “BONG HITS FOR JESUS” is not, that is an example of a subjective and viewpoint-based application of the PTO’s guidelines.  Id. at 2300–01.

III.  Scandalous, Immoral, or Immoral and Scandalous

Not all of the Justices agreed with the majority’s blanket dismissal of the ban on “scandalous and immoral” trademarks.  See id. at 2303–18.  Chief Justice Roberts and Justices Breyer and Sotomayor each filed opinions in which they concurred or concurred in part and dissented in part.  See id.  Although the Justices agreed with the majority’s dismissal of the ban on “immoral” trademarks, three of the Justices felt that the ban on “scandalous” material was not a violation of First Amendment principles, so they dissented in part.  See id. at 2308 (Sotomayor, J., concurring).  Justice Sotomayor felt strongly that a ban on scandalous trademarks is appropriate and stated that “a narrow construction for the word ‘scandalous’—interpreting it to regulate only obscenity, vulgarity, and profanity—would save it from unconstitutionality.”  See id. at 2317.  “Properly narrowed, ‘scandalous’ is 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.”  Id. at 2315.  Justice Sotomayor cited the government’s interest in avoiding association with, or promoting, “certain kinds of speech” as a reason to permit a ban of obscene, profane or vulgar trademarks.  Id. at 2317.

However, the majority held that the standard of “immoral and scandalous” could not be cleaved into two individual standards because the PTO treated the ban as a single standard against “immoral and scandalous” trademarks.  Id. at 2302.  In the words of Justice Kagan: “There 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.”  Id. at 2303.

IV.  Conclusion

Erik Brunetti founded FUCT in the 1990s.  Samuel Hine, The Supreme Court Just Ruled in Favor of Fuct, GQ (June 24, 2019), https://www.gq.com/story/fuct-iancu-v-brunetti-supreme-court-ruling.  Nearly thirty years later in 2019, he was finally able to trademark FUCT and enjoy the accompanying benefits of trademark registration.  Id.  An American Civil Liberties Union staff attorney, Emerson Sykes, commented on Brunetti stating that, “[g]overnment bureaucrats should not be deciding what speech is or is not deserving of trademark protection based on what they consider to be too ‘scandalous’ and ‘immoral.’ That is, at its heart, government suppression of speech based on the viewpoint expressed. It is also . . . unconstitutional.”  Id. (quoting Emerson Sykes).  The Brunetti ruling will allow for businesses to trademark their unconventional brands and for people like Brunetti to reap the benefits that trademark registration brings.

*Miranda is a second-year student at the University of Baltimore School of Law, where she serves as a staff editor for the Law Review.  Miranda is a Distinguished Scholar of the Royal Graham Shannonhouse III Honor Society, and the President of OUTlaw.  This past summer, Miranda worked as a law clerk for the Law Office of Posner and Cord. 

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