Iancu v. Brunetti: The Fate of Fuct

Decided June 24, 2019

The Supreme Court recently released its opinion in Iancu v. Brunetti, a trademark registration case related to Section 2a of the Lanham Act. Specifically, it relates to the bar against registering trademarks that include “immoral or scandalous” matter. In 2017, the Court struct down a similar bar against registering trademarks that include “disparaging” matter (Matal v. Tam, or The Slants case), finding that such a bar is view-point discrimination, in violation of the First Amendment.

Unsurprisingly, the closely related “immoral or scandalous” bar was also challenged.

The case involved the application for registration of FUCT in connection with, essentially, a clothing line. Erik Brunetti (the applicant) had been using the FUCT mark since 1991 when, in 2011, he filed an application for registration with the USPTO. The examining attorney for the application denied registration based on the contention that the mark was “vulgar” in violation of the “immoral and scandalous” bar of Section 2a. Brunetti appealed that decision to the Trademark Trial and Appeal Board (TTAB), and, ultimately, to the Court of Appeals for the Federal Circuit (CAFC).

In light of Tam, the CAFC found that the bar was unconstitutional and thus must be stricken from Section 2a of the Lanham Act. Brunetti won! But the USPTO appealed to the Supreme Court, which brings us here.

Justice Kagan provided a short and to-the-point majority opinion (surprisingly, there was a majority opinion here, although there wasn’t a majority in Tam). First, Kagan noted that in Tam the Court determined that a view-pointed based trademark registration bar is on its face unconstitutional. Thus, if the “immoral or scandalous” bar in fact discriminates on the basis of viewpoint, as argued by Brunetti, it too is unconstitutional.

Justice Kagan quickly notes that there is little to debate here. For a person to determine if something is “immoral or scandalous” it would most certainly be based on one’s view-point. Definitions of “immoral” and “scandalous” were recited and examples given. It was clear. Requiring that the government decide whether a mark is immoral or scandalous results in view-point discrimination in violation of the First Amendment.

In an attempt to save the statute, counsel for the Government argued, among other things, that rather than strike the immoral and scandalous bar altogether, a limiting construction that would remove the view-point bias should be applied. Specifically, the Government wanted the bar to apply only to those trademarks that are “vulgar”, or in other words, lewd, sexually explicit or profane. Thus it would be the “mode” of expression (i.e. word choice) rather than the content of the expression (i.e. underlying ideas/speech) the Government would be judging.

The majority did not accept this proposal, because, as Justice Kagan pointed out, a limiting construction can only be applied to ambiguous statutory language, and the immoral or scandalous bar is not ambiguous—it covers more than only “vulgar” marks. Thus, the decision of CAFC was upheld, and Brunetti’s application for registration would be allowed.

A number of Justices wrote concurring and/or concurring in part and dissenting in part opinions. The dissenting opinions mostly revolved around the last bit of Justice Kagan’s opinion related to applying a limiting construction so that the bar only applied to vulgar marks.

As a background, the USPTO has applied the immoral and scandalous bar as a single  requirement, rather than separate bars for “immoral” marks and “scandalous” marks, even though the two terms are separated by the bar against “deceptive” marks. Justice Kagan and the majority, following the USPTO’s application, thus treated the two terms as a single bar. Because of that, there was no saving any portion of it. The dissenters, however, argued that “immoral” and “scandalous” have two different means and should be separated as a means to save a portion of the statute—specifically, the “scandalous” portion. Judging immorality will always be view-point based, but determining if something is scandalous (aka “vulgar”) is not.

Vulgar, profane, or obscene modes of expression can be picked out without determining if the view of an application is acceptable or not. Determining what is a vulgar, profane or obscene mode of expression might not always be consistent, but neither is determining when a trademark is likely to cause confusion with another or is descriptive of the identified goods/services. Importantly, the dissenters argue, it would not constitute a view-point determination, and therefore is an acceptable bar.

But, as dissenters, their argument did not win the day. As Justice Alito noted, legislators can create new statutes. Thus, if Congress wants to bar registration for trademarks that include vulgar modes of expression, it can pass a law that states as much.