Taking the Same Slant on the Lanham Act for the Second Time in Two Years, Supreme Court tells USPTO to Go Ask Congress to Try Again

Let's get this out of the way: this blog post is going to include an unseemly, in my mind, profane, even obscene, term. I'm just going to put it out there up front, even though I think it's one of the worst things you can say. And no, the First Amendment doesn't protect it.

It's "viewpoint discrimination." Even writing it makes me uneasy.

"FUCT" on the other hand is OK. Protected by the First Amendment, as of now, entirely eligible for registration as a federal trademark, thanks to Erik Brunetti, an artist and entrepreneur who started the clothing line FUCT.

It's actually pronounced "F-U-C-T" clearly reads differently, which is why the application filed by Brunetti to register the term as a trademark in connection with various types of clothing and accessories was initially rejected by a United States Patent and Trademark Office (USPTO) (who deemed it "totally vulgar") and the Trademark Trial and Appeal Board (TTAB) (who declared the mark to be "highly offensive, vulgar," and with "negative sexual connotations.").

These rejections were officially issued under the statutory language of the Lanham Act, specifically 15 USC 1052(a) which the USPTO uses to refuse registration marks consisting or comprised of immoral or scandalous matter. In applying the Lanham Act, the USPTO, TTAB, and federal courts have looked at whether a substantial composite of the general public would find the mark shocking to the sense of truth, decency, or propriety or whether it would give offense to conscience or moral feelings, calling out for condemnation, disreputable or vulgar.

Brunetti appealed this rejection to the United States Court of Appeals for the Federal Circuit, which found this prohibition on immoral or scandalous marks to be in violation of the First Amendment. In reaching this conclusion, the Federal Circuit relied heavily on a relatively recent decision by the Supreme Court in the case of Matal v. Tam, which I wrote about after it was issued. In that case, the Court struck down another portion of 1052(a) that forbids registration of marks that are disparaging in nature.

Justice Kagan wrote for the Court but was joined by an interesting cross-section of her brethren: one liberal member of the Court, Justice Ginsburg and four conservative Justices Thomas, Alito, Gorsuch, and Kavanaugh. There were, however, four concurring and/or dissenting opinions that I'll also briefly discuss below.

The Court, in this case, was not nearly as fractured as it was in Tam where, as Justice Kagan noted in setting the framework for her conclusion, the Court was split between two opinions that each garnered the support of a mere plurality of the Court. The Court in Tam did not reach consensus on a key issue of whether the Lanham Act as a whole merely conditions the receipt of a government benefit (the various rights afforded by registering a trademark) having a registerable mark (in this case, not running afoul of Section 1052(a)) or whether the Lanham Act constitutes an actual restriction on speech. The former would make it more likely that the Lanham Act's provisions might be sustained against a constitutional challenge; the latter would likely make it impossible.

But Justice Kagan was able to sidestep that question again because both opinions in Tam agreed that, if the Lanham Act bar on registration of these types of marks discriminates on the basis of viewpoint, then it is clearly unconstitutional.

And that's the case here, where Justice Kagan reviewed a long history of similar applications, finding that:

"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."

In this case, the USPTO and TTAB both reached their conclusions, in part, on their perception of Mr. Brunetti's website as containing "extreme nihilism and anti-social behavior."

The USPTO argued that the immoral or scandalous provision of the Lanham Act should be construed narrowly, to apply only to those marks deemed offensive or shocking to a substantial segment of the public because of their mode of expression, independent of any views that they may express. But Justice Kagan refused to engage in such narrowing of the statute, refusing to twist the statute to read that way which effectively constitutes the drafting of a new statute entirely.

Justice Alito concurred in the result. While agreeing that the current statute violates the First Amendment in a way that cannot be saved by this Court, he wrote separately to invite Congress to take another crack at this. He suggested the decision should not be read to prevent Congress from adopting a more carefully focused statute that precludes registration of marks containing vulgar terms that play no real part in the expression of ideas.

Justice Roberts also wrote separately. He reiterated that the "immoral" provision cannot be narrowed to save its constitutionality, though he felt differently about the "scandalous" portion of this section, saying it could be read to only reach marks that offend because of the ideas they convey - marks that are obscene, vulgar or profane. He also reached back to reiterate his view expressed in Tam that the Lanham Act does not serve as a restriction on speech but instead only denies a government benefit to a class of speakers.

Justices Breyer and Sotomayor largely went the other direction, albeit in separate opinions. They both agree that the statute should only reach highly vulgar or obscene modes of expression. Under such a standard, they both agree, the USPTO could refuse registration under the Lanham Act to reject the application for "F-U-C-T." Both also appeared to side with Justice Robert's view from Tam that the Lanham Act only restricts noncash benefits otherwise available to trademark holders who register their mark.

So what can we take away from Iancu v. Brunetti? In the short term, there's likely to be a rush to the USPTO to register any and every possible term that previously might have been deemed "immoral and scandalous," especially the worst of the worst in that regard.

That's because, if you read closely and count the numbers, there seem to a very-near majority of the Court (Alito, Roberts, Breyer, and Sotomayor) who would welcome the opportunity to review another, more narrowly tailored version of this section of the Lanham Act that is focused on scandalous terms, should Congress take up the challenge.