By Matthew F. Abbott
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The Trademark Act, 15 U.S.C. § 1502, sets forth several categories of marks that will be refused registration by the U.S. Patent & Trademark Office (“PTO”). In particular, § 1502(a) prohibits registration of marks consisting of “matter which may disparage . . . a person,” as well as marks “consist[ing] of or compris[ing] immoral, deceptive, or scandalous behavior.” In 2017, the Supreme Court ruled that the statute’s prohibition of “disparaging trademarks” violated the First Amendment because it discriminated on the basis of viewpoint. Matal v. Tam, 582 U.S. __ (2017). On June 24, 2019, in Iancu & Brunetti, 588 U.S. ___ (2019), the Supreme Court ruled on the portion of § 1502(a) that prohibits “immoral” or “scandalous” marks, holding that this provision also violates the First Amendment because it disfavors certain ideas.
Mr. Brunetti’s Proposed Trademark
Erik Brunetti founded a clothing line that uses the trademark “FUCT.” When Mr. Brunetti applied for a federal trademark registration for his mark, both the PTO Examining Attorney and the Trademark Trial and Appeal Board (“Board”) rejected it as unregistrable under § 1502(a). The standard applied by the PTO in evaluating potentially “immoral” or “scandalous” marks is whether “a substantial composite of the general public would find the mark “shocking to the sense of truth, decency or propriety”; “giving offense to the conscience or moral feelings”; “calling out for condemnation”; “disgraceful”; “offensive”; “disreputable”; or “vulgar.” In re Brunetti, 877 F.3d 1330, 1446 (Fed. Cir. 2017). The PTO Examiner found the mark was “totally vulgar” and therefore unregistrable, and the Board found it additionally to be “highly offensive” and having “decidedly negative sexual connotations.” The Board found further that Brunetti’s website and products contained “extreme nihilism” and “anti-social behavior” and that in this context, the mark communicated “misogyny, depravity and violence” and was “extremely offensive.” Following rejection by the Board, Brunetti then challenged the “immoral and scandalous” bar in the U.S. Court of Appeals for the Federal Circuit, which found it violated the First Amendment. The Supreme Court thereafter granted certiorari.
BONG HITS 4 JESUS: the PTO’s Viewpoint-Based Treatment of Immoral or Scandalous Marks
Writing for the majority, Justice Kagan identified the key inquiry as whether the “immoral or scandalous” criterion was viewpoint neutral or viewpoint-based. She had little trouble in concluding that the criterion was impermissibly viewpoint-based. In particular, she pointed to a number of examples where the PTO has refused to register marks espousing “immoral” or “scandalous” views of certain subjects while allowing marks that express more accepted view of the same subjects. For example, in regard to the subject of recreational drug use, the PTO refused registration of YOU CAN’T SPELL HEALTHCARE WITHOUT THC (for pain relief medication), MARIJUANA COLA and KO KANE (for beverages), while allowing D.A.R.E. TO RESIST DRUGS AND VIOLENCE and SAY NO TO DRUGS – REALITY IS THE BEST TRIP IN LIFE. In regard to trademarks associating religious references, the PTO refused AGNUS DEI (for safes) and MADONNA (for wine) while allowing PRAISE THE LORD (for a game) and JESUS DIED FOR YOU (on clothing). The PTO similarly refused the mark BONG HITS 4 JESUS on the basis that Christians would be morally outraged by a statement that connects Jesus Christ with illegal drug use.
Rejection of the Government’s Statutory Limitation Argument
Justice Kagan rejected the government’s argument that the statute could be subject to a limiting exception that would limit the prohibition to “marks that are offensive [or] shocking to a substantial segment of the public because of their mode of expression independent of any views they may express,” which would effectively limit the refusals to marks that are “vulgar” (i.e., “sexually explicit or profane”). Justice Kagan held that the statute “covers the universe of immoral and scandalous” – not merely the “mode” of expression, and that limiting the statute in the proposed manner would not be interpreting it but rather creating a new statute. Consequently, she held that both the “immoral” criterion and the “scandalous” criterion violated the First Amendment. Her majority opinion was joined by Justices Thomas, Ginsburg, Alito, Gorsuch and Kavanaugh.
Concurring in part and dissenting in part, Justice Sotomayor agreed that the term “immoral” could not be saved, but argued that the term “scandalous” could be limited in the manner proposed by the government. Her opinion was joined by Justice Breyer, and Chief Justice Roberts wrote a separate opinion concurring in part and dissenting in part in which he expressed the same view. Justice Alito wrote a concurring opinion in which he invited Congress to enact a more precise statute that singles out “vulgar terms that play no real part in the expression of ideas.”
Justice Sotomayor speculated that the floodgates were now open and the PTO will be besieged with applications for highly offensive trademarks. Whether this happens remains to be seen, but in the event that this becomes a significant problem in the eyes of the public or the government, then Congress may see fit to take Justice Alito up on his invitation and take a second try at legislating against “vulgar” marks.