After Brunetti: The Trademark Bar Reacts to Fractured Decision

By IPWatchdog
June 25, 2019

“At oral argument, the government indicated that it was withholding further examination of marks that include the ‘N’ word. What we do know is that those ‘marks’ and others similarly abhorrent will now be approved and published. What will the Trademark Gazette look like going forward?” – Jacqueline Lesser

The Supreme Court issued its decision yesterday in Iancu v. Brunetti. As largely expected, the Court followed its own lead in Matal v. Tam and struck down the Lanham Act’s bar on “immoral or scandalous” trademarks as violating the First Amendment. Below are some insider perspectives on what the ruling means for brands and trademark practitioners going forward.

Alan Behr, Phillips Nizer/ Fashion Industry Law Blog

For a very long time, not many people in the trademark bar questioned the constitutionality of prohibitions against disparaging, immoral or scandalous marks and worked within them—even as those standards changed over the years with shifts in public morality and taste. The implications are potentially broad, starting with those awkward and deeply suspect attempts, now quite active in state (and private) universities, to limit or control ‘hate speech.’ If elements of that kind of speech can now be registered as trademarks for commercial products, any attempt to determine what is hate speech in a political or social context and then to employ governmental instrumentalities to limit it would now appear to be impermissible.

Pat Concannon, Nutter

The word at issue in the Brunetti decision for which federal trademark registration is sought – “FUCT” – is profane and offensive to many. Yet it is used by a significant portion of the population in everyday speech and probably is viewed by most as impolite as opposed to shocking. The real question that I think the justices were mindful of is what happens when someone applies to register much more offensive wording, such as wording that conveys violently hateful and/or misogynistic ideas. The prospects of a government agency mailing a fancy, embossed trademark registration certificate bearing such language that might seem to approve of the wording or the message behind the wording (even though that is not the case) will make a lot of people uncomfortable.

Brian Iverson, Bass, Berry & Sims

As I expected based on oral argument, this case generated five separate opinions. This splintered decision leaves some observers dissatisfied with the lack of clear guidance on how First Amendment challenges to trademark statutes will be decided in the future.

In many ways, Brunetti is a simple extension of Tam. Justice Kagan’s majority opinion has little difficulty concluding that the “immoral or scandalous” clause in the Lanham Act is viewpoint discriminatory, and therefore, unconstitutional under Tam. Unfortunately, the majority did not take the opportunity to answer important questions left open by Tam, such as whether trademark registration should be considered a “government benefit” or “commercial speech.”

Justice Sotomayor’s dissent argues these questions should be resolved based on limited-forum and government-program cases, under which Congress can impose reasonable, viewpoint-neutral content regulations. In a separate concurrence-in-part and dissent-in-part, Justice Breyer advocates throwing out the typical outcome-determinative categories and replacing them with a proportionality test.

Although the analyses vary widely, it appears that most (if not all) of the justices might uphold a different viewpoint-neutral statute allowing refusal of obscene, vulgar, or profane marks. Congress is now left to decide whether, and how best, to replace the statutes held unconstitutional in Tam and Brunetti. For now, Brunetti is a win for the increasing number of brands that use shock value as part of their marketing.

Danielle Johnson, Goldberg Kohn

By striking down the “immoral” and “scandalous” provisions of the Lanham Act, the Court got this right. As Justice Alito pointed out in his concurring opinion, “[a]t a time when free speech is under attack, it is especially important for this Court to remain firm on the principle that the First Amendment does not tolerate viewpoint discrimination.” The Court reaffirmed that principle, striking down a provision that has resulted in many instances of viewpoint discrimination by the USPTO over the years. Examples the majority cited were the refusal to register MARIJUANA COLA and KO KANE for beverages because it is scandalous to “inappropriately glamorize drug abuse” and BONG HITS 4 JESUS because “Christians would be morally outraged . . .” while approving trademarks such as SAY NO TO DRUGS—REALITY IS THE BEST TRIP IN LIFE and PRAISE THE LORD.”

As anticipated, the Court’s primary struggle was in determining whether it must strike down the “immoral” and “scandalous” provisions of the Lanham Act altogether, or whether the statute could be construed in a narrower way that would allow it to stand. In her dissent, Justice Sotomayor took the position that “scandalous” could be limited to mean obscenity, vulgarity, or profanity, which would be in line with the Court’s obscenity doctrine and be permissibly viewpoint neutral. Justice Kagan, however, writing for the majority, aptly called this “statutory surgery” and said that the government was essentially asking them to re-write the statute. “To cut the statute off where the Government urges is not to interpret the statute Congress enacted, but to fashion a new one.” And so, the majority found that while Congress is free to enact a viewpoint neutral statute prohibiting the registration of obscene trademarks, the existing language does not do so and cannot be saved.

Jacqueline Lesser, BakerHostetler

The majority ruling was short and straightforward, but many questions still remain. The court still would not opine on whether trademarks are commercial speech. The court signaled it would entertain a more narrowly drawn restriction that was limited to particular words, but gave no direction on what that would be.

Moreover, can Congress agree to and legislate such a list of words? Finally, assuming that a new statutory restriction was enacted, without any direction could such a list pass constitutional muster on further review?

At oral argument, the government indicated that it was withholding further examination of marks that include the “N” word. What we do know is that those “marks” and others similarly abhorrent will now be approved and published. What will the Trademark Gazette look like going forward?

Joel G. MacMull, Mandelbaum Salsburg P.C.

The Supreme Court’s decision in Iancu v. Brunetti is, as it had to be, consistent with its prior decision in Matal v. Tam. That the majority of the Court refused to give the statute’s reference to “scandalous and immoral marks” a narrow reading as urged by the Government and the dissent, which would have saved it from constitutional invalidation, speaks to both the continued importance the Court places upon First Amendment jurisprudence generally as well as recognition of its rightful role as an arbiter, not a legislator.

Jennifer Ko Craft, Dickinson Wright

To me, what is much more fascinating [than the Supreme Court’s decision] is the USPTO’s last line of defense, asking the Court to more strictly define immoral or scandalous to mean vulgar, lewd, sexually explicit or profane, rather that strike the statute down altogether. Is the statute ambiguous and thus should the Court be permitted to clarify? Or would the Court be legislating, not adjudicating?  Justice Kegan and the other Justices, who joined the majority opinion, held that to cut off the statute is to fashion a new one, and denied the USPTO’s request. Because the USPTO examiners have so broadly interpreted what is immoral or scandalous, for example denying registration of marks such as YOU CAN’T SPELL HEALTHCARE WITHOUT THC for pain relief medication, and frankly accurately interpreted Section 2(a), I agree that the Court had to strike down the statute altogether.

Christopher Larus, Robins Kaplan LLP

It will be interesting to see whether Congress will now move to enact a narrower prohibition against registration of marks that are lewd, obscene, or profane. The Court strongly signaled that it would uphold such a narrower restriction.

This decision opens the door for challenges to similar prohibitions in the patent realm. For example, the Patent Act prohibits granting of design patents that could be deemed offensive to any race, religion, sex, ethnic group, or nationality, such as those which include caricatures or depictions. This prohibition is almost certainly unconstitutional under the standards set forth in the court’s recent Iancu decision.

John E. Ottaviani, Partners with Partridge Snow & Hahn

The Brunetti decision is not surprising, given the Supreme Court’s Matal decision from 2017. My own view is that I agree with the majority that this provision is broad enough to prohibit registration of marks that offend because of the ideas they convey (scandalous terms), as well as marks that offend because of their mode of expression (vulgar and profane terms).

The majority was careful not to rewrite the provision in a manner that might make it more palatable. Justice Alito agreed that the provision should be struck down but invited Congress to adopt a more carefully focused statute that precludes the registration of vulgar terms that play no part in the expression of ideas. In my opinion, however, as a practical matter, the current Congress does not seem to be inclined to focus on such things.

It will be interesting to see whether the logic of Matal and Brunetti is extended to other restrictions on registration in the federal trademark law and the USPTO rules, such as the current USPTO policy against registration of marks for cannabis-related products and services.

James Rosini, Hunton Andrews Kurth LLP

Free speech is free speech as far as I can tell, and striking down federal prohibitions against trademark protection for immoral or scandalous matter seems to be going in the right direction. Thus, I have to go with the Majority Opinion on this one and have to agree with Justice Kagan when she writes that, ‘The First Amendment does not allow the government to penalize views just because many people, whether rightly or wrongly, see them as offensive.’

Mitchell Stein, Sullivan (fka Sullivan & Worcester)

The Court has extended its bar against regulating trademarks based on their content. The Court is in effect stating that the marketplace, and not the government, should be the final arbiter of the commercial success or failure if a trademark.

The main division among the Justices was whether the trademark statute was unconstitutional as to bans on both “offensive” and “scandalous” marks. The majority, led by Justice Kagan, said both bans were unconstitutional as they discriminated against marks on the basis of their content.

A minority, led by Justice Sotomayor, claims that a ban on “scandalous” marks should survive constitutional challenge, as “scandalous” applied to a narrow category of language that was content neutral. This dispute regarding how to apply the First Amendment to statutes is likely to continue in future cases.

Fara Sunderji, Dorsey & Whitney

As Justice Alito’s concurrence notes, “at a time when free speech is under attack, it is especially important for this Court to remain firm on the principle that the First Amendment does not tolerate viewpoint discrimination.” However, he makes clear that that the “decision does not prevent Congress from adopting a more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas.

In the short term, this may mean a rash of new intent-to-use trademark applications for marks that were once refused on the basis of vulgarity, but U.S. trademark registrations require use in commerce. Businesses have always been free to use vulgar or obscene words on their products because the Lanham Act could not stop that. Thus, it is unlikely that the public will see any real change in the use of immoral or scandalous trademarks in the marketplace. Long term, we will have to see if Congress accepts Justice Alito’s invitation to create a more focused statute.

 

 

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Discuss this

There are currently 3 Comments comments. Join the discussion.

  1. Pro Say June 25, 2019 5:09 pm

    From Danielle’s comment:

    “Justice Kagan, however, writing for the majority, aptly called this ‘statutory surgery’ and said that the government was essentially asking them to re-write the statute. ‘To cut the statute off where the Government urges is not to interpret the statute Congress enacted, but to fashion a new one.’”

    Ummmm … yet Mayo / Alice was O.K.?

    Yea, right.

  2. Perplexed June 26, 2019 9:48 am

    Is yelling “fire” in a crowded, enclosed space when there is no fire considered free speech that we condone? Do the consequences of our actions no longer matter? What makes us a civilized society then, rather than a free-for-all?

  3. mike June 26, 2019 5:40 pm

    >> What makes us a civilized society then, rather than a free-for-all?

    The acknowledgment of, respect for, and pursuit of, the Source and Giver of objective morality, my friend.

    More particularly, following the two commandments mentioned by Jesus.

    “But when the Pharisees heard that he had silenced the Sadducees, they gathered together. And one of them, a lawyer, asked him a question to test him: ‘Teacher, which is the great commandment in the Law?’ And he said to him, ‘You shall love the Lord your God with all your heart and with all your soul and with all your mind. This is the great and first commandment. And a second is like it: You shall love your neighbor as yourself. On these two commandments depend all the Law.'”

    Listen to your heart. In the “yelling fire” example, would you do it to yourself? If not, then don’t do it. If only everyone followed such a simple moral compass.

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