From The Field

June 25, 2019

On June 24, 2019, the Supreme Court held in Iancu v. Brunetti that the Lanham Act’s prohibition on registering immoral or scandalous marks (15 U.S.C. §1052(a)) violates the First Amendment.

In a case involving the registrability of the mark FUCT, all nine Justices agreed that the bar on “immoral” marks constitutes impermissible viewpoint discrimination under the First Amendment.  The six Justices in the majority – in an opinion written by Justice Kagan – also held that the bar on registering “scandalous” marks constitutes viewpoint discrimination.  Three of the Justices (Roberts, Breyer and Sotomayor) believed the bar on “scandalous” marks could be interpreted more narrowly to keep it within constitutional bounds.  But the majority refused to engage in the “dissent’s statutory surgery.”  

The Iancu decision comes as little surprise to many.  Just two years ago, the Court held in Matal v. Tam, 582 U. S. ___ (2017), that the Lanham Act’s ban on registering marks that disparage any person, living or dead, also constitutes impermissible viewpoint discrimination under the First Amendment.

Justice Alito wrote a separate and noteworthy concurrence, suggesting that Congress could adopt a more carefully focused law that would preclude the registration of marks containing vulgar terms and that would survive First Amendment scrutiny.  According to Justice Alito, the mark at issue could be denied registration under such a law. 

Full text of Iancu:

Author: Dave Steiner