The Lanham Act is the U.S. federal codification of trademark law.[1] For decades, Section 1052(a) of the Lanham Act enabled the USPTO to refuse to register a trademark that “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead…”
These prohibitions have been increasingly controversial, not least because they beg the questions of: immoral or disparaging to whom, and in whose eyes?
In 2017, the Supreme Court earlier struck down the second proscription, “matter which may disparage or falsely suggest a connection with persons, living or dead” on the basis that the provision discriminated on the basis of viewpoint.[2]
The Court has now ruled that the first proscription, of “immoral[] or scandalous matter,” also violates the First Amendment “for the same reason: It too disfavors certain ideas.”[3]
Writing for the majority, Justice Elena Kagan stated that “according to [Respondent], the mark (which functions as the clothing’s brand name) is pronounced as four letters, one after the other: F-U-C-T. But you might read it differently and, if so, you would hardly be alone.”
However, the Court reiterated, “The government may not discriminate against speech based on the ideas or opinions it conveys.” And the Lanham Act, “on its face, distinguishes between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them; those inducing societal nods of approval and those provoking offense and condemnation.”
Thus, “[t]he facial viewpoint bias in the law results in viewpoint-discriminatory application.”
The holding raises interesting questions. Justice Sotomayor argues in her dissent-in-part that “the Government will have no statutory basis to refuse (and thus no choice but to begin) registering marks containing the most vulgar, profane, or obscene words and images imaginable.” Several Justices comment that federal trademark registration conveys a powerful commercial benefit that the government is not required to provide, and that people who choose to use rude words or obscenities may use them without seeking federal registration. Does the government now have no ability to refuse trademark registration on these grounds?
Further, what implications do these rulings have for other similar trademarks? For example, the Washington Redskins football team have been locked in a battle over the 2014 revocation of the “Redskins” trademark for being “disparaging to Native Americans,” the very ground that was just ruled unconstitutional.
1. Enacted July 5, 1946, codified at 15 U.S.C. § 1051 et seq.
2. Matal v. Tam, 582 U. S. ___ (2017) (rejection of band name “The Slants” is viewpoint-based discrimination)”
3. Iancu v. Brunetti, 588 U.S. ___ (2019) (rejection of clothing trademark FUCT is also viewpoint-based discrimination).