Oops I Did it Again: Time to Register those Scandalous Marks

by Dennis Crouch

Trademark rights have long held substantial sway and power in courts and among administrators who are often required by regulations to respect trademark rights.  This case – expanding the scope of rights to include immoral and scandalous content – is likely to undermine and begin an erosion of those protections.

Iancu v. Brunetti (2019)

In an interesting free speech opinion, the Supreme Court has sided against Congress and the USPTO — finding the statutory prohibitions on registering immoral or scandalous trademarks to be an unconstitutional limit on free speech.  The decision here follows Matal v. Tam (2017) where the court similarly held unconstitutional a  parallel provision restricting disparaging marks.

Justice Kagan wrote the 6-person majority opinion that was joined by Justices Thomas, Ginsburg, Alito, Gorsuch, and Kavanaugh.  The remaining justices agreed that the First Amendment requires the government to register immoral marks, but argued that at least some scandalous marks can be properly prohibited. In the minority viewpoint, the court should have narrowly construed that aspect of the statute to a Constitutional scope while retaining some of its effectiveness.

This case involves the mark “FUCT” that Brunetti has been using for many years in association with his product line for wealthy rebellious skaters.  However, when he decided to register the mark, the PTO rejected his application as directed toward immoral or scandalous matter as required by the Lanham Act.  Brunetti appealed.

The big question in the case was whether the court would see these restrictions as viewpoint based — they did.  The court explains:

So the key question becomes: Is the “immoral or scandalous” criterion in the Lanham Act viewpoint-neutral or viewpoint-based?

It is viewpoint-based. . . . [T]he Lanham Act permits registration of marks that champion society’s sense of rectitude and morality, but not marks that denigrate those concepts. . . . [T]he Lanham Act allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety. Put the pair of overlapping terms together and the statute, 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.

Once the limitation is defined as viewpoint based, the result was easy for the court — invalid as unconstitutional.

The decision here did not resolve the open question in Tam: whether the Lanham Act registration bars are (1) conditions on a government benefit or instead (2) simply restrictions on speech.

[Iancu v. Brunetti]

Although not fully stated, I expect that a slight majority of the justices would agree with Justice Alito’s concurring opinion that Congress could adopt “a more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas.” Alito goes on to suggest that the particular mark here – FUCT – could be barred under such a statute. “The term suggested by that mark is not needed to express any idea and, in fact, as commonly used today, generally signifies nothing except emotion and a severely limited vocabulary.”  Chief Justice Roberts further explained: “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.”

I have to admit difficulty in working through the fundamentals of this case — how does a limit on registering a mark equate with a limit on speech?  The majority opinion entirely skipped this debate because it was covered in Tam – although tersely and incompletely.  Justice Breyer did a nice job of explaining the problem that free speech analysis has become intensely category-based , and that “the trademark statute does not clearly fit within any of the existing outcome-determinative categories.  Why, then, should we rigidly adhere to these categories?”

43 thoughts on “Oops I Did it Again: Time to Register those Scandalous Marks

  1. 6

    Just got my “Slant Eyed G 00 ks R Takin’ Your Spot in College” trademark registered! Thank you so much, Simon Tam, for the great work you’ve done for the Asian community.

  2. 5

    There are three plausible reactions from Congress that might follow this decision:

    (1) Do Nothing. Congress is very good at doing nothing, so surely the likeliest reaction is simply not to react. The portions of the Lanham Act that have not been struck down will continue in effect, while the now-defunct portions will sink into silent obloquy.

    (2) Amend the Statute to Track Allowable First Amendment Lines. The Supreme Court has already recognized “obscenity” and “fighting words” as exceptions to the First Amendment. Instead of excluding “scandalous and immoral” and “disparaging” from the Lanham Act, the Congress could amend the act to refuse registration to the “obscene” and that which “exhorts to violence” (or some such). These registration exclusions would presumably be upheld as doing no more than excluding that which the First Amendment does not protect in the first place.

    (3) Repeal the Whole Act. This is probably the least likely outcome but not wholly implausible in a nation that was willing to defund the NEA rather than allot funds for an exhibition of the works of Robert Maplethorpe.

    Follow-on question to #3 above: the U.S. is party to international treaties that oblige us to maintain a trademark registration system. If we were to repeal the Lanham Act entirely, would the fact that all 50 states also run trademark registration schemes leave us still in substantial compliance with our treaty obligations?

  3. 4

    Brunetti has been using for many years in association with his product line for wealthy rebellious skaters.

    Subtle. This made me chuckle.

    I have to admit difficulty in working through the fundamentals of this case — how does a limit on registering a mark equate with a limit on speech?

    You are not having a difficulty. The Court’s conclusion simply does not follow from its premises. You are thinking about it correctly, but they are not, and therefore you correctly intuit—upon reading—that the Court’s argument does not make sense.

    Whatever…

    We all know the holding. I dare say that it is easy enough to advise clients based on this holding, even if none of it makes logical sense when interrogated Socratically.

    1. 4.1

      Tuesday, 09 Apr 2019 at 8:15 pm – Great Hall, Memorial Union

      Simon Tam, founder and bassist of The Slants, talks frankly about racism, his experiences as a musician, and how this Asian American dance rock band unintentionally revived a longstanding battle over trademarks and racial slurs. Tam will discuss how the nearly eight-year-long legal battle over the band’s name came about, their ultimate victory for free speech, as well as the unintended consequences the Supreme Court decision had for other civil rights legal organizations. His book, Slanted: How Being Asian Got Me Into Trouble, will be published this spring.

      Milk that cow, Simon! By the way, your all-Asian band s-u-c-k-s (TM).

      1. 4.1.1

        Your feelings are noted.

      2. 4.1.2

        their ultimate victory for free speech

        LOL. Because expanding the private right to control the speech of others is a “victory” for “free speech.” Sure it is. In bizarre world, maybe.

        1. 4.1.2.1

          Malcolm,

          Maybe try to understand the legal context at point here.

      3. 4.1.3

        That’s not remotely true. I heard them live. They were very good.

        1. 4.1.3.1

          Did you buy the Slunts T-shirt? I hope so. Every Slunts T-shirt strikes a blow deep into the heart of anti-Asian discrimination, something made possible only through an expansive trademark regime.

    2. 4.2

      I wonder why this had to be framed specifically as a free speech issue rather than in broader principles.

      It seems to me that a fundamental principle of a free society is that laws should not be enacted or enforced to arbitrarily and capriciously apply to some and not others. A principle of equality before the law based on relevant and fair considerations re. proper purposes of the law.

      The sort of principle that would not allow:

      banning all blue cars while allowing all others – by arbitrarily refusing their registration at motor vehicle registries
      banning all well-done steak while allowing all other kinds of steak- by arbitrary FDA edict
      banning all one-story homes – by arbitrarily inserting that into builders regulations

      What we see here is capricious law treating some persons unjustly and unequally before the law for no relevant reason.

      People who want blue cars, well-done steaks, or one-story houses would by these sorts of laws have their freedoms trampled.. unfairly treated for no rational reason… There is no justification that the freedom and the pursuit of happiness should be curtailed simply because someone in the State decides he does not like blue cars, well-done steaks, or one-story houses.

      That a car is “Blue” is an irrelevant consideration for the granting of registration of a car.
      A steak being “Well-done” is not a relevant consideration to ban it as unsafe.
      A house being “One-story” is not a relevant consideration to ban it as unsafe.

      If blue became unsavory or sacrilegious, or if well-done steaks became a symbol of vice, or one story houses distasteful to those in power, it would be no justification that persons should be treated differently just because the State feels like it. It matters not that persons who want blue cars, well-done steaks, or one-story houses do not belong to any recognized marginalized group… those people would be unjustly marginalized before the law… and a State should not get away with such non-objective law.

      The facilitation of commerce and the economy which the trademark registration system broadly serves, could be used by the State to encourage or discourage any commercial activity it wishes if abused. Denying marks to companies which produce blue cars, restaurants which serve well done steaks, or building companies who build one-story houses, would be arbitrary and capricious. If congress had written the Lanham act with such restriction, it should be broadly unconstitutional, because it would be capricious and arbitrary and irrelevant to the purpose of the act, irrespective of freedom of speech. Likewise for specifically banning “immoral” (subjective) marks.

      So, has the constitution been gutted so much under the weight of statist leanings that there are no longer any protections of basic general freedoms… that capricious creation and application of law has to be pushed back using something specific like the freedom of speech, rather that broader principles?

      There otta be something to protect us…

      1. 4.2.1

        If blue became unsavory or sacrilegious, or if well-done steaks became a symbol of vice, or one story houses distasteful to those in power, it would be no justification that persons should be treated differently just because the State feels like it.

        Ah, then surely you agree that the “Religious Freedom Restoration Act” is a complete unconstitutional travesty, as is the “right” to discriminate against people as long as you have a “sincere” religious belief. Right? Because religions themselves are just collections of h0 r se shirt and can’t possibly provide “get out of jail free” cards as its adherents demand so often.

        Why, some incredible @ – h0le even put “In Gob We Trust” on my government’s money! To whoever did that: f k you, with a rusty chainsaw.

        But let’s be sure to pretend to be concerned about “viewpoint discrimination” when it comes to registering “F – u – c t” as a trademark. What a country.

      2. 4.2.2

        the weight of statist leanings

        ROTFMLAO

      3. 4.2.3

        There otta be something to protect us…

        Surely the protection against anti-blue laws is elections. Voters like the freedom to choose a blue car, and will not return politicians who arbitrarily curtail their freedoms to no good end whatever.

        I do not buy the unstated premise of your argument that the Constitution was enacted to codify a whole mess of libertarian presuppositions as a sort of meta-law to our legal system. Besides, the “arbitrariness” that you advance as the objection above sounds in substantive due process (and is evaluated on a rational basis review scheme), rather than the first amendment (strict scrutiny) basis of the Court’s decision at issue here.

        1. 4.2.3.1

          This presupposes that election results reflect the will of the majority or that the will of the majority is somehow laudable and correct.

          1. 4.2.3.1.1

            …then of course there is the Tyranny of the majority (which very much was on the mind of the F0unding F@thers…

            1. 4.2.3.1.1.1

              Right, because a lot of the “founders” were concerned about their slaves being taken away and their white supremacist “values” being taken away.

              Hence we have the Senate, am incredibly anti-democratic institution.

              1. 4.2.3.1.1.1.1

                What exactly is the point that you are trying to make? That you feel that the foundations of the country are “wrong?” Which ones? Or is this merely you enjoying your nebulous feelings yet again?

                Please feel free to relocate yourself to a different country at any time.

                1. What exactly is the point that you are trying to make?

                  “Derp derp I’m derp sooooo derp confused derp.”

                2. Your Derp dance does not answer the question.

                  Maybe spend just a little effort on being on point, eh?

          2. 4.2.3.1.2

            This presupposes that election results reflect the will of the majority or that the will of the majority is somehow laudable and correct.

            I concede the point you are making up to a point. That is to say, I certainly agree that “elections” is poor protection where the point at stake has a historical track record of being unpopular (e.g., civil rights for religious minorities) or obscure or unintelligible to all but a well educated elite (e.g., monetary policy). It makes sense to create constitutional provisions to put those issues beyond the reach of legislatures or the electoral majorities to install them. Still and all, one really does not want to constitutionalize every policy dispute, or else the governance becomes too constrained to adapt to changing circumstances. That is why our constitution does not specify the tariff rate for copper ore, or the maximum allowable content of sulfur in unleaded gasoline for sale in July.

            So, when thinking of the question “should one be able to register [X] as a trademark?”, does that question seem more like civil rights for religious minorities, or more like the tariff rate on copper ore? To my mind, this is decidedly more toward the “tariff on copper ore” end of the spectrum.

            It seems silly to me to maintain the Constitution is totally indifferent to whether we have a national trademark registration system at all, but that the Constitution simultaneously holds that if we enact such a national registry, that it absolutely must afford registration to the F-word, and the N-word, and to any manner of other vulgarities that are almost purpose-contrived to motivate the formation of electoral majorities in favor or rescinding the national registration. It seems doubly silly to contend that the reason that the Constitution mandates as much is because of “free speech,” when trademark laws serve to impede speech.

            This is scarcely the worst opinion that the Court has ever written. It does not even break into the top ten worst of the last year. Still and all, it is not good legal reasoning.

    3. 4.3

      “I have to admit difficulty in working through the fundamentals of this case — how does a limit on registering a mark equate with a limit on speech?”

      Why is this so hard to understand? If you have a Constitutional right, the Govt. not only cannot infringe it directly, but cannot discriminate against those who exercise their rights.

      Would a law that says only someone who affirms that “the United States is the greatest country on earth” qualifies to receive a trademark registration (or a patent) survive First Amendment scrutiny? No, it wouldn’t.

      A trademark registration is a government conferred benefit. It has advantages over maintaining an unregistered mark. The Govt. cannot limit it to marks that express only favored viewpoints (or, in the negative, do not express disfavored viewpoints). That is the holding of this case as well as Matal v. Tam.

      1. 4.3.1

        “Slants” and “F-u-c-t” are not “viewpoints.” And denying registration is not “curtailing your freedom of speech.” Certainly there is some “discrimination” going on, but the overarching goal is to encourage trademarks that are not “negative” in some respect. Is the desire for that result (i.e., commercial marks that are “positive” or “neutral” rather than “negative”) irrational? I don’t think so …

        1. 4.3.1.1

          You really don’t get the understanding of viewpoint discrimination, do you?

          From someone fond of mouthing “First Amendment,” you really don’t get jack s h1t about that domain of law, do you?

          1. 4.3.1.1.1

            Trademarks are not for “expressing viewpoints” and the don’t promote “free speech”, they limit it.

            Fundamentals, Bildo. As noted before, there is nothing more bizarre and hypocritical obsessed with expanding government granted IP “rights”. You guys are infantile cl 0 wns.

            1. 4.3.1.1.1.1

              “more bizarre and hypocritical than a glibertarian obsessed with …”

      2. 4.3.2

        If you have a Constitutional right, the Govt. not only cannot infringe it directly, but cannot discriminate against those who exercise their rights.

        There is no discrimination against people exercising their First Amendment Rights. There is discrimination against people seeking certain forms of trademarks, which isn’t really speech at all to begin with. But that kind of discrimination has nothing to do with the First Amendment or “free speech.”

        Trademarks themselves LIMIT free speech. That’s why these cases (Tam and Brunetti) are so bizarre. They are artefactual results of Supreme Court decisions that were poorly thought through or not limited enough in their holdings.

        1. 4.3.2.1

          Funny how it is that you are not up in arms on that universal aspect of Trademarks surpressing the First Amendment for that 98% of other words “being surpressed,” and it is only on the “colorful words” cases that you find your soapbox.

          Now why is that?

        2. 4.3.2.2

          Apart from First Amendment law, you do not understand trademark law, either.

          The only rights one can have in a trademark is the right to use it to identify the source of goods or services. And even then, the rights extend only to preventing others from using it in a way that confuses the consuming public into believing that their goods or services are yours.

          If I want to write a review saying Brand X products are crap, nothing in trademark law prevents me from doing that. Or putting Brand X in a movie or book.

          The whole meme of “trademark law restricts expression” is bunk. It’s like saying the law of fraud restricts expression because I cannot lie my way to pick the other guy’s pocket.

          1. 4.3.2.2.1

            Steak n’ Shake owns registration #948362, which it has held since Dec 1972. The registration covers the slogan “in sight, it must be right.”

            The slogan alludes to the fact that when one ordered a hamburger at Steak n’ Shake, it used to be the case that the cook would come to your table, so that you could select which cuts of beef you wanted in your burger. The cook would then grind them at your table. The intimation was that while other hamburger joints might be grinding substandard cuts of meat into your burger, this could not be the case at Steak n’ Shake because the meat was ground “in sight” so that “it must be right.”

            Suppose that some other hamburger joint (call it Brand X for our purposes) wishes to employ the same strategy of grinding the meat at the table. The idea that the customer might be confused as to the source of the meat (when they are sitting in what is obviously not a Steak n’ Shake restaurant) is ludicrous. And yet, no one would be surprised if an injunction were granted under U.S. trademark law to prevent the Brand X restaurant from intimating that “it must be right, done in sight” because that phrase is confusingly similar to Steak n’ Shake’s trademark.

            In other words, trademark law really can stand as a barrier to commercial speech, even when the trademark violation does not engender customer confusion. Perhaps not often, and perhaps not to a socially deleterious extent. Still and all, it is not mere ignorance of trademark law that could lead someone to describe it as a burden on free expression. Trademark law really can burden free expression, even if only lightly.

            1. 4.3.2.2.1.1

              Greg,

              You really should avoid talking about law that you clearly do not understand (here, BOTH First Amendment law and Trademark Law).

              1. 4.3.2.2.1.1.1

                Just shut the fk up, Bildo, you obnoxious self-loving prck.

          2. 4.3.2.2.2

            Malcolm does not bother with actual substantive law — that just gets in the way of his feelings.

          3. 4.3.2.2.3

            Bored, I’m pretty sure you’re moniker should be “naive, unimaginative” lawyer. People with money use trademarks to threaten people on a regular basis.

            1. 4.3.2.2.3.1

              ohhh – methinks a “trigger” for Malcolm’s feelings is exposed here: those that “use the law” to “threaten people” (on a regular basis) might just be “upsetting” to Malcolm (especially given Malcolm’s cognitive dissonance in regards to any sense of propriety of the law PROVIDING a proper basis FOR “threatening people.”

              And note how Malcolm phrases his reply: insinuating that it is those “with money” that are the culprits (and obviously glossing over any factual connection with having a right to protect one’s obtained legal benefits under the law).

              Malcolm has long maintained a “implied fault” with ANYONE that would seek to actually use the legal system to protect that which they have a right to protect. He glosses over this so often (in part because he never provides a full cogent legal position) BECAUSE he would rather post about his feelings than have any actual dialogue about the underlying law.

              Note as well that he bathes his reply in ad hominem, and insinuates that “of course, Malcolm’s feelings must be right” and that “of course, everyone recognizes that only ‘shysters’ and ‘low level people’ ever seek to protect those rights afforded under the law (and interestingly enough, rights that Malcolm professes to obtain for clients that keep him soooo busy…).

              What again is the point that you are trying to make here, Malcolm? Speak up son.

              1. 4.3.2.2.3.1.1

                (…and this may earn the title of the thread’s refrain of: Oops I Did it Again… )

              2. 4.3.2.2.3.1.2

                those that “use the law” to “threaten people” (on a regular basis) might just be “upsetting” to Malcolm

                It’s upsetting to most people, particularly in the IP context, you ridiculously m-0r-0n-ic pr # ck. Of course, threatening people with patent suits is pretty much the only thing that gets you and your client’s tiny p e e p e es hard. That pretty much explains everything, doesn’t it, Bildo?

                1. Yet again, your cognitive dissonance is on display.

                  I have to wonder what it is you do for YOUR clients when they tell you that they want to enforce the rights that you (supposedly) got for them…

  4. 3

    I assume that the concept of trademark tarnishment is also ripe for destruction here? Or will some excuse be cooked up to argue that competing “viewpoints” aren’t involved in that kind of dispute?

    1. 3.1

      assume that the concept of trademark tarnishment is also ripe for destruction here?

      I am willing to give this a listen.

      How exactly do you think that the concept of trademark tarnishment is ripe for destruction?

      Maybe show you understand
      what is trademark tarnishment,
      who the players would be in a case of trademark tarnishment, and
      how a government practicing viewpoint discrimination would intersect with the players involved with trademark tarnishment

      As I said, I am willing to give your views a listen.

      1. 3.1.1

        … of course, you will have to do MORE than merely “assume,” post your feelings, or employ your typical rhetorical shtick.

        But hey, this may be a second point in a single day that we might agree upon.

  5. 2

    Justice Breyer did a nice job of explaining the problem that free speech analysis has become intensely category-based , and that “the trademark statute does not clearly fit within any of the existing outcome-determinative categories. Why, then, should we rigidly adhere to these categories?”

    Indeed. The “First Amendment” is a handful of words in the Constitution and everything else was written by the Supreme Court (nobody could have predicted that outcome!). All the Supremes would need to do is come up with a new “doctrine” or “category” (with its accompanying “tests”/rules). Of course, they need the attorneys representing the parties (or at least one of the attorneys representing one of the parties) to hold their hands and guide them through this stuff.

    In any event, it’ll be fun to give away a few T-shirts with the registered (LOL!) slogans “[deleted] THE SUPREME COURT” and “JUSTICE KAGAN EATS DOG FOOD” shirts next time I’m visiting the Court. Fun times.

  6. 1

    To quote Stephen Fry: “The sort of twee person who thinks swearing is in any way a sign of a lack of education or a lack of verbal interest is just f*cking lunatic.”

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