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U.S. Supreme Court Issues Decision in Brunetti Trademark Registration Case

On June 24, 2019, the U.S. Supreme Court issued a decision in Iancu v. Brunetti (U.S. Supreme Court docket no. 18-302).  In its decision, the Court held that the Lanham Act’s prohibition on federal registration of “immoral or scandalous” trademarks violates the First Amendment.  Therefore, the U.S. Patent and Trademark Office can no longer refuse to register marks on this basis.  The Court’s decision in Brunetti follows its recent decision in Matal v. Tam, which similarly held that the prohibition on registration of trademarks that “disparage” a person is unconstitutional under the First Amendment.

In Matal v. Tam, the Supreme Court set forth that if a bar against trademark registration is viewpoint based, it is unconstitutional.  Applying the same test to the bar against “immoral or scandalous” marks, the Court found that refusal to register a mark because it is “immoral or scandalous” favored one viewpoint over another (e.g., marks that generally favor society’s sense of morality versus those that denigrate it).  Since the refusal to register “immoral or scandalous” thus discriminates against certain viewpoints, it too is unconstitutional.

The Government, in its arguments, suggested that the immoral or scandalous bar could be limited to a viewpoint neutral interpretation that would only prevent registration of marks that are lewd, sexually explicit, or profane.  The dissent also posited that the “scandalous” bar could be subjected to a narrow construction that would only prevent registration of obscene, vulgar, or profane marks.  However, the majority of the Court found that the statute as written is not limited to this construction.  Therefore, should the USPTO desire to bar the registration of lewd, sexually explicit, or profane marks, Congress must intervene and amend the trademark law.

A copy of the Brunetti decision may be accessed at https://www.supremecourt.gov/opinions/18pdf/18-302_e29g.pdf.