The Lanham Act, which governs the registration of trademarks, has long banned the registration of “immoral … or scandalous” trademarks.[1] However, in a recent case before the United States Supreme Court,[2] it was determined that such a restriction violates the First Amendment.
In the case of Iancu v. Brunetti, the question before the Supreme Court was whether the trademark “F-U-C-T” was able to be registered as a trademark. The US Patent and Trademark Office (USPTO) had originally denied the registration of the mark, as being immoral or scandalous, due to its similarity to probably the most iconic word of profanity in the English language. The owner of the would-be-trademark argued that provision of the Lanham Act which prohibited his mark’s registration was unconstitutional under the First Amendment’s right to free speech.
In the divided opinion of the court, the court relied on Matal v. Tam,[3] which was the case from a couple of years ago that allowed the trademark of the band name “The Slants” and invalidated the Lanham Act’s provision against disparaging trademarks.[4] In Tam, the court found that the provision discriminated based on viewpoint; if a trademark met with certain (non-disparaging) viewpoints then it was allowed but it was disallowed if it did not. As a result, the provision against registration of disparaging trademarks violated the First Amendment.
In Iancu, the majority of the court came to the same conclusion regarding trademarks which could be considered immoral or scandalous. The court held that such a ban on the registration discriminates on the basis of viewpoint. Any potential mark which is contrary to society’s sense of decency was prohibited. As a result, such a viewpoint-based discrimination violates the First Amendment.
The overriding principle is based on the reason a particular mark would be banned. If it is banned due to a particular viewpoint (whether it be disparaging, immoral, or scandalous), such a ban is not constitutional. That provision of the Lanham Act has thus been invalidated by the Supreme Court.
If you have questions regarding how to protect your business’s trademark, contact the experienced attorneys at Goosmann Law Firm, PLC, in its Omaha, Sioux City, or Sioux Falls office.
[1] 15 U.S.C. § 1052(a)
[2] Iancu v. Brunetti, 139 S.Ct. 782 (2019). https://www.supremecourt.gov/opinions/18pdf/18-302_e29g.pdf
[3] Matal v. Tam, 582 U.S. ___ (2017).
[4] 15 U.S.C. § 1052(a)
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