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The U.S. Supreme Court this week officially pulled the plug on the Lanham Act’s prohibition on the registration of trademarks that comprise “immoral” or “scandalous” matter on First Amendment grounds.  The prohibition, found in Section 2(a) of the Act, was already on life support after the Court’s 2017 decision in In re Tam found the U.S. Patent and Trademark Office’s refusal to register the name of an Asian rock band called “THE SLANTS” constituted an impermissible viewpoint-based restriction on speech.  This gave streetwear designer Erik Brunetti the green light to proceed with his longstanding dispute with the USPTO.

As previously reported, Brunetti had sought to trademark his brand name “FUCT” since 2011 to no avail.  Ultimately, however, Brunetti successfully challenged the refusal in the Federal Circuit which found denying Brunetti registration simply because his mark was deemed to be “immoral” and/or “scandalous” violated the First Amendment.  The government petitioned for certiorari.

The Supreme Court unanimously found the “immoral” component of Section 2(a) to be unconstitutional, and a 6-3 majority struck down the “scandalous” portion as well.  Justice Elena Kagan penned the opinion of the Court and recognized that the section unlawfully empowered the USPTO to promote certain messages while disfavoring others.   For instance, Kagan notes the USPTO granted registration of marks to the Drug Abuse Resistance Education (D.A.R.E.) program while refusing to register the marks “BONG HITS 4 JESUS”, “YOU CAN’T SPELL HEALTHCARE WITHOUT THC”, and “MARIJUANA KOLA.”

Justices Sonia Sotomayor, Stephen Breyer, and John Roberts partly dissented over concerns that striking the prohibition of the registration of “scandalous” matter would require the government to register marks so obscene and/or hateful that they could incite a violent reaction.  “Just think about how you might react if you saw someone wearing a t-shirt or using a product emblazoned with an odious racial epithet,” Breyer warned.  The dissent argued the “scandalous” provision of the law could be salvaged because it does not attack ideas, but rather only how those ideas are expressed.

The majority disagreed but left the door open to Congress to adopt, in Justice Alito’s words, “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 other words, if a mark was deemed wholly obscene under the Miller test (which is a standard as nebulous as the word “obscene” itself), it could theoretically still be refused registration if Congress so chooses.  Congress could also theoretically redraft Section 2(a) to cover marks that constitute fighting words and/or have the likely impact of inciting imminent violence.  But a broad ban on marks the USPTO finds to be “immoral” and/or “scandalous” is a thing of the past.