U.S. Supreme Court Strikes Down Bar Against Registration of “Immoral or Scandalous” Marks

Wednesday, June 26, 2019

The U.S. Supreme Court has ruled that a statutory prohibition under 15 U.S.C. § 1052(a) against the federal registration of marks that contain “immoral” or “scandalous” matter violates the First Amendment of the U.S. Constitution.  Iancu v. Brunetti, --- S.Ct. ---, No. 18-302, 2019 WL 2570622 (June 24, 2019). The case arose from the U.S. Patent & Trademark Office’s refusal to register the mark FUCT as applied to clothing, because the mark is a homonym of a vulgar word.  Writing for the majority, Justice Kagan relied on the Supreme Court’s 2017 decision, Matal v. Tam, 137 S.Ct. 1744 (2017).  In Tam, the Court unanimously held that the same statutory section’s bar against registering marks that “disparage” any “person[], living or dead” was facially unconstitutional because it allowed the Government to discriminate against free speech based on the “viewpoint” of the ideas or opinions the speech conveyed.  Justice Kagan found that the “immoral or scandalous” bar of Section 1052(a) likewise is viewpoint based, and therefore is unconstitutional.  Notably, the Court, particularly in its concurring and dissenting opinions, left the door open for Congress to rewrite Section 1052(a), without violating the First Amendment, to bar registrations containing vulgar terms that play no real part in the expression of ideas.

Update:  The Patent and Trademark Office had been suspending action on pending applications for marks deemed to fall within this statory prohibition while Brunetti was pending.  The PTO issued Examination Guidance 2-19 on July 3, 2019, indicating that those applications will be removed from suspension and examined for any other requirements or refusals.  \