By: Lilly Sweeney
The Lanham Act of 1946 created federal prohibitions against granting trademark protections for “immoral” or “scandalous” material. In June of 2019, the Supreme Court held in Iancu v. Brunetti that those prohibitions were unconstitutional, as they violated the first amendment. Erik Brunetti’s clothing line FUCT faced backlash from the U.S. Patent and Trademark Office (“PTO”) when he attempted to register the brand name as a trademark. The PTO determined that FUCT violated the Lanham Act’s prohibition on the registration of trademarks with consisting of or comprising immoral or scandalous matter. The Court of Appeals found the prohibition to be a violation of the First Amendment, prompting the Supreme Court to review the case.
Upon review, the Court’s key attempt to determine whether the prohibition was a violation of the First Amendment hinged on whether the “immoral or scandalous” criteria was viewpoint-based or viewpoint-neutral. In looking at the PTO’s interpretation of the Act and the dictionary definitions of “immoral” and “scandalous,” the Court decided the prohibition was viewpoint-based. Viewpoint-based statutes are unconstitutional restrictions on free speech. The “immoral or scandalous” bar was deemed substantially overbroad due to the seemingly unlimited immoral or scandalous ideas which would all be covered by the Lanham Act’s prohibition. The Court took note of many examples where the PTO approved trademarks that expressed ideas that would not offend a majority of Americans and rejected trademarks that expressed ideas that would offend a majority of Americans. The example categories spanned trademarks with a religious nature and those connected to illegal activities like drug use. The PTO approved trademarks based on the viewpoints expressed in the ideas. As a result, the Court affirmed the Court of Appeals holding that the “immoral or scandalous” prohibition was a violation of the First Amendment.
This decision has positive implications for trademark for applicants. Many will now be free to register marks that would previously have been rejected due to the “immoral or scandalous” prohibition. This allows for trademark owners to enforce their rights against others using the trademark. However, whether this ruling will have an effect on commerce is yet to be seen. The consumer, advertiser, and business owners will all play a part in determining whether or not a trademark is overall successful for a brand.