Author Archives: rbeck@beckreed.com

FUCT founder, Erik Brunetti. Photo by Alessandro Barthlow.

Two years ago, in Matal v. Tam, 582 U.S. ___ (2017), the U.S. Supreme Court invalidated the Lanham Act’s disparagement clause (prohibiting the registration of disparaging trademarks)  as unconstitutional under the First Amendment.

On June 24, 2019, the U.S. Supreme Court issued another landmark ruling in Iancu v. Brunetti, 588 U.S. ____ (2019), this time striking down the Lanham Act’s prohibition on the registration of “immoral . . . or scandalous” trademarks. Citing its holding in Tam, the Court found that the “immoral or scandalous” bar similarly discriminates based on viewpoint and therefore runs afoul of the First Amendment’s Free Speech Clause.

The Lanham Act’s “Immoral or Scandalous” Bar

Prior to Brunetti, the Lanham Act prohibited the registration of trademarks that “[c]onsist[] of or comprise[] immoral . . . or scandalous matter[.]” 15 U.S.C. §1052(a).

To determine whether a mark violated the provision, the U.S. Patent and Trademark Office (USPTO) would ask 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.”

The Case

Erik Brunetti founded a clothing line that uses the trademark “FUCT.” According to Brunetti, FUCT is pronounced by spelling out its four letters in order, “F-U-C-T.” However, as the Court observed, “you might read it differently and, if so, you would hardly be alone.”

Brunetti’s application for trademark registration failed at the USPTO and again on review by the USPTO’s Trademark Trial and Appeal Board (TTAB). On review, the TTAB found that the mark was “highly offensive,” “vulgar,” and had “decidedly negative sexual connotations.”

Among other things, the TTAB considered how Brunetti used the mark and found that his website and products contained imagery near the mark of “extreme nihilism” and “antisocial” behavior. The TTAB concluded: “Whether one considers [the mark] as a sexual term, or finds that [Brunetti] has used [the mark] in the context of extreme misogyny, nihilism or violence, we have no question but that [the term is] extremely offensive.”

Brunetti challenged the Lanham Act provision in court and the Federal Circuit found that the provision violated the First Amendment. The U.S. Supreme Court granted cert.

Supreme Court Strikes Down the “Immoral or Scandalous” Bar

In an opinion by Justice Kagan, the Court affirmed the Court of Appeals for the Federal Circuit 6-3.

The Court first discussed its holdings in Tam, whereby it struck down a neighboring provision of the Lanham Act that prohibited the registration of “disparaging” trademarks. Although, in Tam, the Court had divided evenly between two opinions and could not agree on a specific framework for deciding the case, the justices had agreed on a set of key principles. “First, if a trademark registration bar is viewpoint-based, it is unconstitutional. . . . And second, the disparagement bar was viewpoint-based.”  Accordingly, “[v]iewpoint discrimination doomed the disparagement bar.”

Applying the holdings in Tam, the Brunetti Court reasoned that, if the “immoral or scandalous” bar discriminated on the basis of viewpoint, it would run afoul of the First Amendment. The critical question thus became: was the “immoral or scandalous” bar viewpoint-based or viewpoint-neutral?

The Court quickly found that the “immoral or scandalous” bar was impermissibly viewpoint-based. The Court stated:

So the Lanham Act allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety. Put the pair of overlapping terms together and the statute, on its face, distinguishes between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them; those inducing societal nods of approval and those provoking offense and condemnation. The statute favors the former, and disfavors the latter. “Love rules”? “Always be good”? Registration follows. “Hate rules”? “Always be cruel”? Not according to the Lanham Act’s “immoral or scandalous” bar.

Indeed, as the Court observed, the USPTO had registered trademarks such as D.A.R.E. TO RESIST DRUGS AND VIOLENCE and SAY NO TO DRUGS—REALITY IS THE BEST TRIP IN LIFE while denying registration for such marks as BONG HITS 4 JESUS and YOU CAN’T SPELL HEALTHCARE WITHOUT THC.

The government urged the Court to accept a narrow construction of the statute that would purport to remove the viewpoint bias by limiting the bar to marks that are immoral or scandalous because of their “mode” of expression, rather than the viewpoints they express. In other words, the government sought to limit the “immoral or scandalous” bar to prohibit the registration of vulgar, lewd, and sexually explicit or profane marks. The Court rejected the government’s proposal to read the statute narrowly as inconsistent with the language of the statute.

The Court also rejected the government’s argument that the Court should uphold the statute against a facial attack on the basis that the unconstitutional applications were insubstantial compared to the statute’s legitimate applications. The Court found that this specific defense had never been applied to a viewpoint-discriminatory law and, in any case, the “immoral or scandalous” bar was substantially overbroad.  

In closing, the Court observed that:  

There are a great many immoral and scandalous ideas in the world (even more than there are swearwords), and the Lanham Act covers them all. It therefore violates the First Amendment.

Justice Alito concurred, calling viewpoint discrimination a “poison to a free society” and noting that “[a]t a time when free speech is under attack, it is especially important for this Court to remain firm on the principle that the First Amendment does not tolerate viewpoint discrimination.”  

Chief Justice Roberts and Justice Breyer each filed opinions concurring in part and dissenting in part. Justice Sotomayor, joined by Justice Breyer, concurred in part and dissented in part.

Related Reading: Matal v. Tam: SCOTUS Brings a New Slant to Disparaging Trademarks

***

Hannah T. Joseph, the author of this article, is an attorney with the firm’s litigation group, focusing her practice on the growing areas of trade secrets law, restrictive covenants, employee mobility, and unfair competition. Hannah’s work in intellectual property has been recognized at the American Intellectual Property Law Association and the Boston Bar Association, among others.

eck Reed Riden LLP is Boston’s innovative litigation boutique. Our hand-picked team of lawyers have years of experience at large law firms, working with clients ranging from Fortune 500 companies to start-ups and individuals. We focus on business litigation and labor and employment, and are recognized as a leading authority in trade secret, noncompete, and unfair competition law. We are experienced litigators and counselors, helping our clients as business partners to resolve issues and develop strategies that best meet our clients’ legal and business needs – before, during, and after litigation. We’re ready to roll up our sleeves and help you. Read more about us, the types of matters we handle, and what we can do for you here.

Russell Beck moderated the trade secrets panel at the Boston Bar Association’s 18th Annual Intellectual Property Year in Review on January 25, 2018.

The panel consisted of: Hon. Mitchell H. Kaplan (Superior Court, Business Litigation Session); Kati O’Brien (Staples, Inc.); C. Max Perlman (Hirsch Roberts Weinstein LLP); and Stacey Schmidt (Fidelity Investments).

Among other things, the panel updated the legal community on the Defend Trade Secret Act ‘s first 18 months and its effects on companies, courts, and litigation strategy, as well as developments at the state and national level concerning noncompetes and other restrictive covenants.

The 18th Annual IP Year in Review was sponsored by the BBA’s Intellectual Property Section.

For up-to-the-minute analysis of legal issues concerning noncompete agreements in Massachusetts and across the United States, read Russell Beck’s blog, Fair Competition Law.

eck Reed Riden LLP is among the leading authorities in trade secret, noncompete, and unfair competition law, and our experience handling these matters is backed by our extensive employment law and business litigation experience. Our hand-picked team combines attorneys with complementary expertise and practical experience.

The Wall Street Journal featured Beck Reed Riden LLP’s noncompete agreement experience. In 2016, the White House issued a report entitled, “Non-Compete Agreements: Analysis of the Usage, Potential Issues, and State Responses,” relying in part on Beck Reed Riden LLP’s research and analysis, including its 50 State Noncompete Survey.

Russell Beck’s work in this area is well recognized; it includes:

• Over twenty two years of working on trade secret, noncompete, and unfair competition matters
• Assisting the Obama White House as part of a small working group to develop President Obama’s Noncompete Call to Action
• Authoring the book Negotiating, Drafting, and Enforcing Noncompetition Agreements and Related Restrictive Covenants (5th ed., MCLE, Inc. 2015), used by other lawyers to help them with their noncompete cases
• Drafting and advising on legislation for the Massachusetts Legislature to define, codify, and improve noncompetition law
• Teaching Trade Secrets and Restrictive Covenants at Boston University School of Law
• Founding and administrating the award-winning blog, Fair Competition Law
• Establishing and administrating the Noncompete Lawyers and Trade Secret Protection groups on LinkedIn, with over 1,600 members around the world
• Founded and chaired the Trade Secret / Noncompete Practice for an AmLaw 100 firm

In addition, Russell was honored for his work in this area of law in the 2017 Chambers USA Guide, which stated, “‘Excellent attorney‘ Russell Beck of Beck Reed Riden LLP is a ‘terrific noncompete specialist,’ according to industry commentators. He is a skilled litigator with experience representing clients ranging from individuals to large corporations at both trial and appellate levels.”

Beck Reed Riden LLP is Boston’s innovative litigation boutique. Our lawyers have years of experience at large law firms, working with clients ranging from Fortune 500 companies to start-ups and individuals. We focus on business litigation and labor and employment. We are experienced litigators and counselors, helping our clients as business partners to resolve issues and develop strategies that best meet our clients’ legal and business needs – before, during, and after litigation. We’re ready to roll up our sleeves and help you. Read more about us, the types of matters we handle, and what we can do for you here.