In our prior blog entries here, here, here, here, here and here, we followed the course of Matal v. Tam, the case involving the mark “THE SLANTS.” In that case, the Supreme Court struck down a portion of Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), on First Amendment grounds. Section 2(a) states in pertinent part:
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . [c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute . . .
The Supreme Court held that the restriction on disparaging marks was a viewpoint-based restriction on speech. We provided a somewhat educated guess at that time that immoral or scandalous marks would similarly infringe the First Amendment. The Court found an opportunity to explore this issue in Iancu v. Brunetti, a case involving the mark “FUCT.” The question presented was whether the restriction on “immoral” and “scandalous” marks should be viewed similarly to “disparaging” marks, and on June 24, 2019, the Court agreed that it should.
The Supreme Court decided that immoral and scandalous marks should be treated similarly to disparaging marks. A six justice majority of the Court struck down Section 2(a) as facially unconstitutional under the First Amendment. The Court found that the clause was a viewpoint-based restriction on speech, finding that the terms “immoral” and “scandalous” both connote a failure to align with conventional moral standards. The Court rejected the Government’s claim that the “immoral and scandalous” limitation is viewpoint-neutral, or that it is susceptible of a limiting construction to affect only modes of expression rather than the content itself. The Court stated that Section 2(a) had not been used in such a limiting way in practice. Even if the provision could have been written to be limited to modes of expression, the Court continued, it would not rewrite a law to conform it to constitutional norms, rejecting the use of “statutory surgery.”
Scandalous Marks: Can the PTO stop use of the “Seven Dirty Words”?
It is on this point of statutory surgery for “scandalous” marks where a split in views arose. The majority of the Court found that the restriction on scandalous marks was also viewpoint-based, noting that the PTO has rejected marks that tended to glamorize drug use, associated irreverent religious references to product use, or reflected support for terrorism. Even if there were some theoretical restriction that is viewpoint neutral, the Court concluded, that is not the law as it had been applied.
At least four justices would have found the “scandalous” restriction of Section 2(a) to pass constitutional muster. They found that prohibiting scandalous marks such as swear words or obscenities, did not restrict viewpoints but instead regulated the manner of expression. None of the justices, in fact, were particularly concerned about protecting the ability of brand owners to use a profanity-laced catch phrase as a designation of the source of goods. On this point, Justice Alito noted that the term associated with the trademark FUCT “generally signifies nothing except emotion and a severely limited vocabulary.”
Next stop, Congress?
The majority also acknowledged that a statute could be fashioned to limit restrictions to modes of expression independent of viewpoint. Thus, while the Court did strike down Section 2(a), it also laid down a road map for revising Section 2(a) to limit the use of scandalous modes of expression (including obscenities). The ball appears to now be in Congress’ court. In the meantime, applicants are free to seek their f—-laden branding without fear of a Section 2(a) refusal. Applicants will still be required to show that a mark is a source designator of goods or services rather merely common epithets or phrases that consumers would not recognize as a source of goods or services.
Somewhere, George Carlin is smiling.