We previously published an article about the requirements for registering a trademark with the United States Patent and Trademark Office (USPTO) here. Our past article did not explore in any great detail the numerous reasons the USPTO might deny a trademark application. However, one basis the USPTO has historically relied on to deny an application is where the applied-for mark is deemed to “consist or comprise of immoral or scandalous matter.” On June 24, 2019, the Supreme Court of the United States (SCOTUS) issued a decision rendering the “immoral and scandalous” standard as a basis to reject a trademark unconstitutional.

In Iancu v. Brunetti, Erik Brunetti wanted to register a trademark for his clothing line, “FUCT.” Brunetti argued the trademark was to be read as an acronym, “F-U-C-T,” standing for “Friends You Can’t Trust.” However, as noted by the majority opinion, “you might read it differently and, if so, you would hardly be alone.” The USPTO denied Brunetti’s application as being immoral and scandalous. Brunetti appealed, arguing this rejection violated his First Amendment right to free speech. SCOTUS agreed.

An important tenet of First Amendment law is that laws which ban speech based on viewpoint are unconstitutional. These so called “viewpoint-based” laws are considered unconstitutional because it is not for the government to decide which viewpoints should be silenced and which should be allowed to be heard. Instead, all viewpoints (with exceptions for incitements of violence, threats, and so on) are to be equally allowed and unrestrained.

In light of this, SCOTUS in 2017 decided Matal v. Tam, which challenged a USPTO decision rejecting a trademark application for the mark “SLANTS.” The USPTO held this trademark violated the rule banning trademarks which “disparage” any person, living or dead. In the Matal decision, SCOTUS held the so-called “disparagement” bar was viewpoint-based because it was not for the USPTO to decide what types of terms disparaged a person or group of persons, living or dead.

SCOTUS expanded on the Matal decision in Iancu, holding that the USPTO deciding whether certain terms are scandalous or immoral is similarly viewpoint-based. The law allowing the USPTO to reject scandalous or immoral trademarks provides that material is scandalous or immoral when its message does not comply with society’s sense of decency or propriety. Certainly in 2019, there are many different ideas as to what this sense of decency or propriety actually is, given the subjective and ever-changing nature of the concept. Because there is no uniform standard to help the USPTO establish the current society’s sense of decency and propriety, allowing the USPTO to unilaterally determine where this line is drawn and to restrain speech based on the examining attorney’s subjective views as to which side of the line a particular mark falls would necessarily call for the USPTO to exercise viewpoint-based discretion, which the First Amendment forbids.

Whether this decision opens the floodgates for trademarks previously rejected as scandalous or immoral or whether Congress will revise the statute to allow the USPTO to once again reject these types of trademark applications remains to be seen. In arguing before SCOTUS, the government proposed using a different interpretation of the law which would only preclude those trademarks which were lewd, sexually explicit, or profane. SCOTUS rejected this solution, finding the proposed interpretation was so different from the actual law that SCOTUS would be writing a new law altogether.