For anyone with a dream to shock people with a vulgar trademark featuring or referencing a dirty four-letter word, the United States Supreme Court has given you your ruling. In a 6-3 decision on Monday, the high court overturned the U.S. Patent and Trademark Office’s near century-long ban on registering immoral or vulgar trademarks.
“In its decision, the high court held that the refusal by the U.S. Patent and Trademark Office to accept the registration of ‘FUCT’ amounted to viewpoint discrimination in violation of the First Amendment to the U.S. Constitution,” reports The Hollywood Reporter (THR).
Erik Brunetti filed suit against the U.S. Patent and Trademark Office (PTO) when it rejected his clothing line “FUCT” under the provisions outlined in the Lanham Act’s ban on immoral and scandalous messaging. THR provided some history leading to Monday’s decision:
In December 2017, [Brunetti] got the United States Court of Appeals for the Federal Circuit to hold that the Lanham Act’s ban on immoral or scandalous matter was unconstitutional. That seemingly opened the door to more registrations of f-bombs and other profane marks that could be associated with sponsors.
The Federal Circuit’s 2017 decision came months after the Supreme Court opinion involving Simon Tam, the Asian American frontman of The Slants, who convinced a majority of justices to strike down a separate provision of the Lanham Act — one that looked down on the registration of disparaging marks.
The Tam case presaged the Brunetti one, but the government was nevertheless hopeful that its prurient concerns would survive another day.
The government maintained that the Lanham Act did not violate the First Amendment, arguing that trademarks symbolized a subsidy for messages that the government wished to promote rather than a ban on that form of speech being sold in a good or service. With both the Tam and Brunetti decisions, the Supreme Court has largely rendered that argument obsolete.
Justice Elena Kagan wrote the majority opinion and was joined by Clarence Thomas, Ruth Bader Ginsburg, Samuel Alito, Neil Gorsuch, and Brett Kavanaugh.
“We hold that this provision infringes the First Amendment for the same reason: It too disfavors certain ideas,” wrote Kagan.
Though the government claimed to be “content-neutral,” Kagan noted that such bans on profanity and other vulgar statements amounted to a subjective standard that has been inconsistently applied in the past.
“The facial viewpoint bias in the law results in viewpoint-discriminatory application,” wrote Kagan. “The PTO, for example, asks whether the public would view the mark as ‘shocking to the sense of truth, decency, or propriety’; ‘calling out for condemnation’; ‘offensive’; or ‘disreputable.’ Using those guideposts, the PTO has refused to register marks communicating ‘immoral’ or ‘scandalous’ views about (among other things) drug use, religion, and terrorism. But all the while, it has approved registration of marks expressing more accepted views on the same topics.”
Justice Samuel Alito concurred with Kagan — noting that the decision does not call for moral relativism, but a preventative measure against government exploitation. “Our decision is not based on moral relativism but on the recognition that a law banning speech deemed by government officials to be ‘immoral’ or ‘scandalous’ can easily be exploited for illegitimate ends,” he wrote.
As noted by THR, the Brunetti decision could have far-reaching implications on the type of speech regulated by the Federal Communications Commission.
Chief Justice John Roberts and Justices Stephen Breyer and Sonia Sotomayor dissented.
Breyer wrote: “How much harm to First Amendment interests does a bar on registering highly vulgar or obscene trademarks work? Not much. The statute leaves businesses free to use highly vulgar or obscene words on their products, and even to use such words directly next to other registered marks. Indeed, a business owner might even use a vulgar word as a trademark, provided that he or she is willing to forgo the benefits of registration.”