SCOTUS Update: First Amendment Protects “F-Word” and Other “Immoral” or “Scandalous” Trademarks

SCOTUS Update: First Amendment Protects “F-Word” and Other “Immoral” or “Scandalous” Trademarks
July 20, 2019 RPJ Law

July 20, 2019

Just prior to adjourning for its summer recess, the United States Supreme Court ruled that First Amendment free speech considerations required the United States Patent and Trademark Office (“PTO”) to register the trademark “FUCT.” 

The “FUCT” case is the second in three years contesting federal trademark registration content restrictions. In 2017, in a case involving the trademark of the Asian-American band “The Slants,” the court ruled unanimously that trademarks considered to be disparaging nonetheless deserve First Amendment protection. 

As I reported previously, following the landmark ruling that the Lanham Act’s statutory bar to registration of “disparaging” trademarks ran afoul of the First Amendment, the United States Court of Appeals for the Federal Circuit struck down a companion portion of the federal trademark law that precluded registration of “immoral” or “scandalous” marks. The Federal Circuit found that the mark at issue – Erik Brunetti’s “FUCT” apparel mark – was “vulgar,” and it rejected the contention that the mark was an acronym of “Friends You Can’t Trust.” But the appellate panel struck down the statutory ban on “scandalous” marks as impermissible content-based discrimination on First Amendment free speech rights for which the government offered “no substantial government interest” in regulating in the context of trademark registration.  

In a 6-3 opinion written by Associate Justice Elena Kagan, the Court struck down federal restrictions against granting trademark protection for “immoral” or “scandalous” material as unconstitutional. “The First Amendment does not allow the government to penalize views just because many people, whether rightly or wrongly, see them as offensive,” Kagan announced in the decision read from the bench.

At oral argument in April, Chief Justice John Roberts and several other justices noted that a ruling for striking down the restriction would lead to even more vulgar trademarks, such as racial pejoratives; he called it the “promotion of vulgarity.” He and Associate Justices Stephen Breyer and Sonia Sotomayor dissented, agreeing that “immoral” covers too broad a range of potential trademarks but arguing that the ban on “scandalous” trademarks should stand. “Refusing registration to obscene, vulgar or profane marks does not offend the First Amendment,” Roberts reasoned. “The First Amendment protects the freedom of speech; it does not require the government to give aid and comfort to those using obscene, vulgar and profane modes of expression.” Justice Sotomayor said that under the court’s ruling, “the government will have no statutory basis to refuse” and therefore would have to begin “registering marks containing the most vulgar, profane or obscene words and images imaginable.”

RPJ Partner Lawrence BrocchiniThis article is intended only as a general discussion of these issues. It is not considered to be legal advice or relied upon.  If you need assistance with a particular IP (including trademark), commercial or employment issue, including concerning trademark-related issues, Larry Brocchini would be pleased to consider providing additional details or advice about specific situations.