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Iancu v. Brunetti

Supreme Court of the United States

April 15, 2019, Argued; June 24, 2019, Decided

No. 18-302.


Justice Kagan [***4]  delivered the opinion of the Court.

Two Terms ago, in Matal v. Tam, 582 U. S. ___, 137 S. Ct. 1744, 198 L. Ed. 2d 366 (2017), this Court invalidated the Lanham Act’s bar on the registration of “disparag[ing]” trademarks. 15 U. S. C. §1052(a). Although split between two non-majority opinions, all Members of the Court agreed that the provision violated the First Amendment because it discriminated on the basis of viewpoint. Today we consider a First Amendment challenge to a neighboring provision of the Act, prohibiting the registration of “immoral[ ] or scandalous” trademarks. Ibid. We hold that this provision infringes the First Amendment for the same reason: It too disfavors certain ideas.

Respondent Erik Brunetti is an artist and entrepreneur who founded a clothing line that uses the trademark FUCT. According to Brunetti, the mark (which functions as the clothing’s brand name) is pronounced as four letters, one after the other: F-U-C-T. See Brief for Respondent 1. But you might read it differently and, if so, you would hardly be alone. See Tr. of Oral Arg. 5 (describing the brand name as “the equivalent of [the] past participle form of a well-known word  [**718]  of profanity”). That common perception caused difficulties for Brunetti when he tried to register his mark with the U. S. Patent and Trademark Office (PTO).

Under the [***5]  Lanham Act, the PTO administers a federal registration system for trademarks. See 15 U. S. C. §§1051, 1052. Registration of a mark is not mandatory. The owner of an unregistered mark may still use it in commerce and enforce it against infringers. See Tam, 582 U. S., at ___, 137 S. Ct. 1744, 198 L. Ed. 2d 366, 374. But registration gives trademark owners valuable benefits. For example, registration constitutes “prima facie evidence” of the mark’s validity. §1115(a). And registration serves as “constructive notice of the registrant’s claim of  [*2298]  ownership,” which forecloses some defenses in infringement actions. §1072. Generally, a trademark is eligible for registration, and receipt of such benefits, if it is “used in commerce.” §1051(a)(1). But the Act directs the PTO to “refuse[ ] registration” of certain marks. §1052. For instance, the PTO cannot register a mark that “so resembles” another mark as to create a likelihood of confusion. §1052(d). It cannot register a mark that is “merely descriptive” of the goods on which it is used. §1052(e). It cannot register a mark containing the flag or insignia of any nation or State. See §1052(b). There are five or ten more (depending on how you count). And until we invalidated the criterion two years ago, the PTO could not register a mark that “disparage[d]” a “person[ ], living [***6]  or dead.” §1052(a); see Tam, 582 U. S. ___, 137 S. Ct. 1744, 198 L. Ed. 2d 366, 389.

This case involves another of the Lanham Act’s prohibitions on registration—one applying to marks that “[c]onsist[ ] of or comprise[ ] immoral[ ] or scandalous matter.” §1052(a). The PTO applies that bar as a “unitary provision,” rather than treating the two adjectives in it separately. In re Brunetti, 877 F. 3d 1330, 1336 (CA Fed. 2017); Brief for Petitioner 6 (stating that the PTO “has long treated the two terms as composing a single category”). To determine whether a mark fits in the category, the PTO asks whether a “substantial composite of the general public” would find the mark “shocking to the sense of truth, decency, or propriety”; “giving offense to the conscience or moral feelings”; “calling out for condemnation”; “disgraceful”; “offensive”; “disreputable”; or “vulgar.” 877 F. 3d, at 1336 (internal quotation marks omitted); see Brief for Petitioner 6 (agreeing that the PTO “generally defines” the category in that way).

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139 S. Ct. 2294 *; 204 L. Ed. 2d 714 **; 2019 U.S. LEXIS 4201 ***; 27 Fla. L. Weekly Fed. S 1057; 2019 WL 2570622


Notice: The LEXIS pagination of this document is subject to change pending release of the final published version.


In re Brunetti, 877 F.3d 1330, 2017 U.S. App. LEXIS 25336 (Fed. Cir., Dec. 15, 2017)

Disposition: Affirmed.


trademark, registration, scandalous, marks, words, offensive, immoral, viewpoint, vulgar, profanity, First Amendment, register, regulation, obscene, viewpoint-neutral, shocking, Dictionary, disparagement, message, views, benefits, facial, offend, cases, narrow construction, limiting construction, mode of expression, discriminates, ancillary, commerce

Business & Corporate Compliance, Trademark Law, Trademark Cancellation & Establishment, Registration Procedures, Constitutional Law, Fundamental Freedoms, Freedom of Speech, Scope, The Judiciary, Case or Controversy, Constitutionality of Legislation, Governments, Legislation, Interpretation, Judicial & Legislative Restraints, Overbreadth & Vagueness of Legislation, Trademark Protection, Lanham Act