Presented by John Goodhue
In an opinion by Justice Kagan, a 6-3 Supreme Court held that the Lanham Act's prohibition on registering 'immoral or scandalous' trademarks violates the First Amendment because it discriminates based on viewpoint. Following Matal v. Tam, the Court reasoned that the provision favors marks aligned with conventional moral standards and disfavors those hostile to them, which is impermissible viewpoint discrimination. The Court declined the Government's request to narrow the statute by judicial construction, explaining that its role is to interpret the statute Congress enacted, not to fashion a new one. Chief Justice Roberts and Justices Breyer and Sotomayor dissented in part, and would have upheld a narrower bar limited to obscene, vulgar, or profane marks.
Iancu v. Brunetti, decided June 24th, 2019. The Supreme Court affirmed the Federal Circuit and held that the Lanham Act's bar on registering "immoral or scandalous" trademarks violates the First Amendment, because the bar discriminates on the basis of viewpoint. Justice Kagan wrote for a six-Justice majority. Three Justices would have saved part of the provision by reading it more narrowly. The decision followed directly from the Court's 2017 ruling in Matal v. Tam. Here's the brief.
Erik Brunetti founded a clothing line that uses the trademark FUCT. He sought federal registration of the mark with the Patent and Trademark Office.
The Lanham Act directs the Office to refuse registration of marks that consist of or comprise "immoral or scandalous" matter. A PTO examining attorney and the Trademark Trial and Appeal Board both found that Brunetti's mark fell within that bar and refused to register it. The Office treats the two words — "immoral" and "scandalous" — as a single, unitary standard, asking whether a substantial composite of the general public would find the mark shocking, offensive, or disreputable.
Registration is not mandatory. The owner of an unregistered mark may still use it in commerce and enforce it against infringers, but registration confers valuable benefits — among them, prima facie evidence of the mark's validity and constructive notice of the owner's claim.
Brunetti brought a facial First Amendment challenge to the "immoral or scandalous" bar. The Federal Circuit held the provision unconstitutional. The Supreme Court granted cert.
The question presented: does the Lanham Act's bar on registering "immoral or scandalous" trademarks violate the First Amendment?
The framework came directly from the Court's decision two years earlier in Tam. There, all Members of the Court agreed on two propositions: first, that if a trademark registration bar is viewpoint based, it is unconstitutional; and second, that the Lanham Act's bar on "disparaging" marks was viewpoint based. Viewpoint discrimination, the Court has long held, is an egregious form of content discrimination and is presumptively unconstitutional. The Government conceded that under Tam it could not deny registration based on the views a mark expresses; its only theory for saving the bar assumed it was viewpoint neutral. So the case turned on a single question: is the "immoral or scandalous" criterion viewpoint neutral, or viewpoint based?
The Court held it viewpoint based.
Justice Kagan reasoned from the ordinary meaning of the statute's words. Material is "immoral" when it is inconsistent with rectitude, purity, or good morals; "scandalous" when it gives offense to the conscience or moral feelings. So the Act permits registration of marks that align with society's sense of decency and morality, but refuses those that defy it.
That facial bias, the Court explained, produced viewpoint-discriminatory results: the Office had registered marks approving of one view on drugs, religion, or terrorism while refusing marks expressing the opposite.
The Government urged a narrowing construction — reading the bar to reach only marks that are offensive in their mode of expression, such as lewd, sexually explicit, or profane marks. The Court refused.
Interpreted fairly, the Court concluded, the bar reached the entire universe of immoral or scandalous ideas and was substantially overbroad. On that reasoning, the Court affirmed.
Justice Alito concurred, stressing that the decision leaves Congress free to enact a narrower, viewpoint-neutral bar on vulgar marks. Chief Justice Roberts, Justice Breyer, and Justice Sotomayor each concurred in part and dissented in part: they agreed the "immoral" bar could not be saved, but would have read "scandalous" narrowly — to reach only obscene, vulgar, or profane marks — and, so construed, upheld it.
Brunetti is the second decision in a line. In Tam, the Court struck down the Lanham Act's disparagement bar as viewpoint based; in Brunetti, it struck the "immoral or scandalous" bar on the same ground. Together, the two decisions establish that Congress may not condition trademark registration on the viewpoint a mark expresses. The Court did not decide whether trademark registration is a government benefit or a restriction on speech — a question Tam left open — and it did not disturb viewpoint-neutral registration bars. It resolved only that a viewpoint-based bar cannot stand.
Iancu v. Brunetti, 588 U.S. 388, decided June 24th, 2019. I'm John Goodhue. Thanks for watching.
These videos are educational case briefs, not legal advice, and watching them does not create an attorney-client relationship with the presenter or the firm. Case law and its interpretation evolves, always check a decision's subsequent history. Do not rely on these case briefs, but read the case yourself or have your attorney read them. Videos are presented via an AI avatar and voice clone of John Goodhue, created with his participation and consent.
