Guest Post by Prof. Farley: SCOTUS’s Second Take on Trademark Registration as Speech

By Professor Christine Haight Farley, American University Washington College of Law.  Here, Professor Farley offers her take on Iancu v. Brunetti.  You can read Dennis’s write-up here.

The Supreme Court has now struck down as unconstitutional a second trademark registration bar. The court ruled yesterday in Iancu v. Brunetti that the government may no longer deny trademark registration to marks that are “scandalous” or “immoral.” In 2017, the court struck down a provision that denied trademark registration to marks that are “disparaging” in Matal v. Tam. Both registration bars appear in Section 2(a) of the Lanham Act.

Many commentators had seen the cases as so similar that they wondered why the court had even granted certiorari. Perhaps as a result, the case provoked less interest from amicus brief authors. The conventional wisdom was that the court’s opinion in Tam left no room to uphold this provision.

In Tam, the court ruled that denying trademark registration to marks that disparage constitutes viewpoint discrimination because the government was sorting out “ideas that offend.” The court reconfirmed that viewpoint discrimination is presumptively unconstitutional. In his concurrence, Justice Kennedy described viewpoint discrimination as “a form of speech suppression so potent that it must be subject to rigorous constitutional scrutiny.”

For the Brunetti majority, this was a simple case. Indeed, Justice Kagan, who wrote the majority opinion joined by Thomas, Ginsburg, Alito, Gorsuch, and Kavanaugh, dispensed with the case in ten and a half tight pages even as she devoted a full page to examples of marks that were refused registration (comparing them to similar marks that were approved for registration). The opinion is short and sweet: this is the same case as Tam.

According to the majority, the provision at issue “disfavors ideas” and as such is substantively indistinguishable from the provision in Tam. Here, “the Lanham Act allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety.”

The final page or so of the majority opinion is devoted to explaining why the statute cannot be saved by the “limiting principle” offered by the government. This is the part of the opinion about which there is dissent.

The majority rejects the government’s proposal to limit application of this provision to “vulgar” marks–“lewd,” “sexually explicit or profane” marks. Although such a construction would avoid any viewpoint discrimination, the majority holds that the “immoral or scandalous” bar “stretches far beyond the Government’s proposed construction.” The majority concludes that such a construction would amount to the court rewriting the statute because the plain meaning of the statutory language is broader and ensnares marks that offend because of the ideas they express, not just by their mode of expressing ideas.

Here, in the majority opinion’s only footnote, the majority rebuffs the dissenters characterizing their approach as “statutory surgery.” The majority disagrees that the statute is in any way ambiguous and therefore subject to reinterpretation.

Chief Justice Roberts, Justice Breyer, and Justice Sotomayor each filed separate opinions. Although each concurred that the registration bar on mark that are “immoral” amounts to unconstitutional viewpoint discrimination, each would have limited the court’s constitutional sword to strike down only this provision. Each accepted the government’s limiting principle as an appropriate means to avoid a finding that an act of Congress is unconstitutional.

Justice Breyer began his opinion by citing the court’s precedent that, where fairly possible, the court should endeavor to find a statute constitutional. Interestingly, in Tam the court did not, as the majority put it, “pause to consider whether the disparagement clause might admit some permissible applications (say, to certain libelous speech) before striking it down.”

It is in this space, that I believe the Brunetti decision offers a new and interesting perspective on the court’s approach to the First Amendment. In Brunetti, four Justices expressed a view that scandalous modes of expression should be barred trademark registration. In addition to the three dissenters, Justice Alito, the author of the majority opinion in Tam, stated in his concurring opinion that the court’s opinion would not “prevent Congress from adopting a [] statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas.” He went on to note that the mark in question in this case—FUCT–“is not needed to express any idea and, in fact, as commonly used today, generally signifies nothing except emotion and a severely limited vocabulary.”

Justice Alito’s lack of solicitude toward a portion of the marks targeted by the scandalous provision was echoed by Justices Roberts, Breyer, and Sotomayor. Chief Justice Roberts flatly states that “refusing registration to obscene, vulgar, or profane marks does not offend the First Amendment.” Justice Breyer goes so far as to suggest that “an applicant who seeks to register a mark should not expect complete freedom to say what she wishes, but should instead expect linguistic regulation.”

These sympathetic sentiments toward the government’s interest in regulating vulgarity is in sharp contrast to Tam, in which no Justice expressed any support for the government’s regulation of racial epithets. In Tam, the majority stated that “trademarks often have an expressive content” and Kennedy stated that “marks make up part of the expression of everyday life.” In Brunetti, in the context of vulgar marks, no Justice made mention of “expressive marks” beyond the majority’s conclusion that the provision targets ideas that offend.

In Brunetti, it would also appear that some Justices have retreated from the idea that a registration refusal is a burden on speech. I’ve already mentioned Justice Breyer’s suggestion that applicants ought to expect linguistic regulation. Perhaps the most striking rebuttal of registration as speech comes in this passage in Chief Justice Roberts’ opinion:

“Whether such marks can be registered does not affect the extent to which their owners may use them in commerce to identify goods. No speech is being restricted; no one is being punished. The owners of such marks are merely denied certain additional benefits associated with federal trademark registration. The Government, meanwhile, has an interest in not associating itself with trademarks whose content is obscene, vulgar, or profane. 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.”

Such statements will likely surprise anyone who has read the Tam decision—unless that person attended the oral arguments in Brunetti. Although, as I have suggested, commentators expected the Brunetti case to closely follow Tam, the dialogue in oral arguments were a good clue that at least some members of the court were seeing something different in the Brunetti case. Whereas in Tam, the court appeared to be overwhelming concerned with the free speech rights of Simon Tam who was presented a civil rights activist, in Brunetti, it seems suddenly to have dawned on the court that at issue was the obligation of the government to register a white supremist’s application for the N-word.

This new unease comes through most clearly in the opening lines of Justice Sotomayor’s opinion:

“The Court’s decision today will beget unfortunate results. With the Lanham Act’s scandalous-marks provision, 15 U. S. C. §1052(a), struck down as unconstitutional viewpoint discrimination, 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.”

In his opinion, Justice Breyer remarks, “Just think about how you might react if you saw someone wearing a t-shirt or using a product emblazoned with an odious racial epithet.” Yes, Justice Breyer, many of us were thinking about exactly that in the Tam case as it caused the Redskins to recover their mark. Undoubtedly, Justice Breyer has seen a few of these t-shirts around DC.

Just three cases have caused a recent interest in these trademark registration provisions: first the Redskins case (Blackhorse v. PFI), then Tam, and finally Brunetti. Previously, the constitutionality of these provisions was settled by the Court of Customs and Patent Appeals, the predecessor to the Court of Appeals for the Federal Circuit, in In re McGinley. On the constitutional issue alone, these three cases have produced seventeen opinions. Even still, many important questions have been explicitly sidestepped such as to what extent, if any, the commercial speech doctrine plays, whether viewpoint neutral content discriminatory registration bars pass muster, or whether trademark registration may be considered as a government program or subsidy. In light of what has transpired, perhaps the McGinley court’s approach has some virtues. In McGinley, the court circumvented the constitutional issue by finding that the government’s refusal to register a mark does not affect the right to use it: “No conduct is proscribed, and no tangible form of expression is suppressed. Consequently, appellant’s First Amendment rights would not be abridged by the refusal to register his mark.” Moreover, as Justice Sotomayor noted in a footnote, the McGinley court bifurcated “scandalous” from “immoral” in precisely the manner that the dissenters suggest would save that bar from being struck down as unconstitutional.

In the end, the implications of this case are narrow. As to First Amendment jurisprudence, we perhaps glean a few more clues as to how to determine what constitutes a viewpoint. Beyond that, we learn that at least four members of the court would support regulating vulgar expression. As to trademark law, it would appear that no further statutory or doctrinal vulnerabilities emerge from this decision that had not been portended by Tam. This decision, however, does pave a path forward for amending the Lanham Act to add a bar to the registration of marks that are “scandalous in their mode of expression,” or are “vulgar, lewd, sexually explicit, or profane.”

24 thoughts on “Guest Post by Prof. Farley: SCOTUS’s Second Take on Trademark Registration as Speech

  1. 5

    Holding that there was no workable standard to determine when such maps go too far, the Supreme Court’s partisan (R) majority overturned two lower court decisions that had thrown out both maps last year.

    Shorter R-e-p-u-k-k-k-e Supreme Court Justices: math is teh hard!

    Anti-democracy in action. Nobody could have predicted that a dying diseased white supremacist political party would reject democracy itself if that was the only way to cling to power.

    1. 5.1

      But, hey, there’s definitely no “viewpoint discrimination” involved when the majority of the electorate is disenfranchised by one of the political parties.

      Nope. None at all.


    2. 5.2

      What the “F</b<" does this have to do with patent law?

      Find an appropriate forum for your rants.

      1. 5.2.1

        Remember, folks: Bildo rants here daily about how the Supreme Court should have its jurisdiction taken away from it because …. well, Bildo doesn’t really have a reason. He’s just a whining diaper-soiling entitled crybaby.

        But golly when someone else complains about the Supreme Court or demonstrates the Court’s incredibly hypocrisy when it comes to certain matters (e.g., “viewpoint discrimination” in the micro context of trademarks — the worst thing ever! — versus “viewpoint discrimination” in the fundamental over-arching context of voting in a democracy — (*yawn) — then Bildo gets himself all worked up. Funny stuff. But then Bildo is a really strange and silly person himself (I’m being nice here).


          My posts are appropriate for THIS forum as they pertain to patent law issues.


          Your blight here is noted.

          Also noted is that my discussions on trademark law and any intersection with First Amendment law are on point and far more cogent than anything that you have mouthed.

  2. 4

    In light of what has transpired, perhaps the McGinley court’s approach has some virtues.

    Agreed. Just one more instance of the SCotUS mucking about where the CCPA had already gotten it right, and making a hash in the process. That basic fact pattern (SCotUS unsettles a perfectly serviceable body of CCPA case law) makes a list yards long already, and getting longer each year.

    1. 4.1

      The McGinley view misses the mark that the action of the government, in choosing its particular viewpoints, does have material consequences.

      The “well one could still use” misses entirely the notion that ANYONE could thus “still use” and thus nullify the actual benefit of the provided registration (which still would be available for other “viewpoint chosen” items).

  3. 3

    OT but the Supremes also just decided that veterans benefits case on a major legal issue directly relevant to PTO interpretations of PTO regulations. Surprisingly they unanimously did NOT strip federal agencies of all such deference, but have now limited it to interpretation of “genuinely ambiguous” regulations.  [As before, such deference also “is sometimes appropriate and sometimes not” and “must still be reasonable.” [Feel free to kibitz this very brief version, but please don’t confuse the various gratuitous non-binding concurrent opinions with the decision.]

    1. 3.1

      BTW, does this Sup.Ct.decision also decide the long anticipated judicial challenge to the Chevron Doctrine*of deference to agency interpretation of STATUTES for that agency?

      *Chevron U.S.A. Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984)

    2. 3.2

      From the Scotusblog writeup:

      We rule today that this form of deference should continue,” Kagan says. “The principle of stare decisis—in English, letting decisions stand—is an important one for stability and evenhandedness in the law. To overrule a case, we need a special justification, and Kisor fails to offer one here.”

      Looks like there is some behind the scenes “tussle” going on with the power of the Kavanaugh Scissors.

      1. 3.2.1

        In last week’s decision dealing with the takings clause, part of the split (ostensibly) was over the role of stare decisis, with the dissenters (including Kagan) saying that the court should follow its earlier precedent, even if that case was wrongly decided. So this may be a part of a more general argument.

        Then again, considering how scotus so cavalierly junked chakrabarty etc. in the alice/mayo/myriad cases, this may not be a principled argument.


          The “myth of Chakrabarty”seems harder to stomp out than the proverbial cockroach in a shag rug. So here is the actual quote again. This is the rest of the usually deliberately missleading incomplete cite of “everything under the sun made by man.” The Supreme Court in Diamond v. Chakrabarty immediately thereafter specifically stated that: “This is not to suggest that § 101 has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable. See Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978); Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 255, 34 L.Ed.2d 273 (1972); Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 441, 92 L.Ed. 588 (1948); O’Reilly v. Morse, 15 How. 62, 112-121, 14 L.Ed. 601 (1854); Le Roy v. Tatham, 14 How. 156, 175, 14 L.Ed. 367 (1853). “


            The attempted re-writing of history (“mythisizing” a certain view of Chakrabarty) is even harder to stomp out.

            Those would prefer to snipe from the sidelines and who have not engaged on the merits (in any sense of the detailed analysis of the Supreme Court battles over eligibility) are especially prone to attempts portray that battle as somehow NOT having created a Gordian Knot.

            No surprise (at all) that these same players are ever posting in support of mechanisms that weaken the US patent system.


              Those would prefer to snipe from the sidelines and who have not engaged on the merits

              F ck off, Bildo, you p-a-t-h-et-ic ment@l case.


          Not the first time that Kagan admits a case is clearly wrong but wants “something more” to make a correction (Kimble and Brulotte).

          Recall that one shear of the Kavanaugh Scissors laid out a clear path for when the High Court could more easily sua sponte reverse itself — a clear distinction over Kagan’s fuzziness.


            one shear of the Kavanaugh Scissors

            Stay away from d-r-u-g-s, kids. You don’t want to end up like Bildo.


          If everyone’s favorite language in Chakrabarty was accurately full quoted those later decisions would be better understood. The Supreme Court in Diamond v. Chakrabarty specifically went on to state that: “This is not to suggest that § 101 has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable. See Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978); Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 255, 34 L.Ed.2d 273 (1972); Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 441, 92 L.Ed. 588 (1948); O’Reilly v. Morse, 15 How. 62, 112-121, 14 L.Ed. 601 (1854); Le Roy v. Tatham, 14 How. 156, 175, 14 L.Ed. 367 (1853). “

  4. 2

    we learn that at least four members of the court would support regulating vulgar expression

    Pretty sure you’d get all 9 if people started challenging the FCC’s broadcasting rules regarding “vulgar expression.” Just don’t touch Clarence’s p0rn0 collection.

  5. 1

    The Tam decision will go down in history as one big clstrfck that makes no sense whatsoever. Heckuva job, Simon! And your band still s-cks.

    1. 1.1

      For someone that mouths “First Amendment” (incorrectly by the way) in some mysterious Patent sense, your inability to understand the Tam case — and the current case — really make you look like a person whipsawed by their emotions with no tether to an understanding of the actual law at point.

      You would do far better to at least try to understand the law.

      1. 1.1.1

        your inability to understand the Tam case


        News flash, Bildo: it’s becoming quite clear that the Supremes themselves didn’t understand “the Tam case”. Try to keep up, mkay?

        Up next: Bildo, the Guy Who Can Spot A Fake First Amendment Issue in a Trademark Case from a Zillion Miles Away, will prove himself completely unable to spot a First Amendment issue arising from a patent claim that makes him an infringer when he tells Grandma with Mutation X that she should take less aspirin. But he’s a very serious person! And totally not just a ridiculous glibertarian hypocrite with narcissistic personality disorder.

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