139 S. Ct. 2294 (2019)
Erik Brunetti is an artist and entrepreneur who founded a clothing line that uses the trademark FUCT.1 According to Brunetti, the mark is pronounced as four letters, one after the other.2
Brunetti applied to the U.S. Patent and Trademark Office for federal registration of the mark under the Lanham Act.3 A PTO examining attorney denied the application, determining that FUCT was a total vulgar and therefore unregistrable.4 On review, the Board stated that the mark was highly offensive and vulgar and had decidedly negative sexual connotations.5
It found that Brunetti’s website and products contained imagery, near the mark, of “extreme nihilism” and “anti-social” behavior.6 In that context, the Board thought, the mark communicated “misogyny, depravity, [and] violence.”7 Brunetti brought a facial challenge to the “immoral or scandalous” bar in the Court of Appeals for the Federal Circuit.8 That court held that the prohibition violates the First Amendment.9 The Supreme Court granted certiorari.10
The PTO rejected marks conveying approval of drug use (YOU CAN’T SPELL HEALTHCARE WITHOUT THC for pain-relief medication, MARIJUANA COLA and KO KANE for beverages) because it is scandalous to “inappropriately glamoriz[e] drug abuse.”11 But at the same time, the PTO registered marks with such sayings as D.A.R.E. TO RESIST DRUGS AND VIOLENCE and SAY NO TO DRUGS—REALITY IS THE BEST TRIP IN LIFE.12
Whether the Lanham Act’s prohibition on registration of “immoral or scandalous” trademarks violates the First Amendment?13
The First Amendment prohibits the government from discriminating against speech based on the ideas or opinions it conveys, rendering viewpoint-based restrictions presumptively unconstitutional.14
Yes. The Lanham Act’s prohibition on registration of “immoral or scandalous” trademarks violates the First Amendment because it discriminates on the basis of viewpoint.15 The provision distinguishes between marks aligned with conventional moral standards and those hostile to them.16 In the established facts, the PTO denied registration of FUCT after determining it was highly offensive and vulgar with negative sexual connotations and after reviewing evidence that Brunetti used the mark alongside imagery of extreme nihilism, anti-social behavior, misogyny, depravity, and violence.
The PTO has refused registration for marks conveying approval of drug use, religious references with products, and support for al-Qaeda while approving marks expressing more accepted views on the same topics such as D.A.R.E. TO RESIST DRUGS AND VIOLENCE and PRAISE THE LORD for a game. This selective application shows the government disfavors ideas that offend conventional morality.17
The Lanham Act’s prohibition on registration of “immoral or scandalous” trademarks violates the First Amendment.18
Related opinions on this issue
Justice Alito joined all but Part II-B of the opinion of the Court.19 He emphasized that the Court’s decision does not leave the Government powerless to restrict the registration of vulgar marks.20 The Government may still prohibit the registration of marks that are “vulgar,” meaning that they are “highly offensive” and “degrading.
” The PTO has applied the provision in that way in the past, and nothing in the Court’s opinion prevents it from doing so in the future.21 He also noted that the Court’s decision does not mean that the Government must register every mark that an applicant seeks to register.22 The Lanham Act contains other provisions that bar the registration of marks that are deceptive, misleading, or confusing.23
Those provisions are viewpoint-neutral and remain fully operative.24
Justice Thomas dissented on the ground that the First Amendment does not prohibit the Government from refusing to register trademarks that are “immoral” or “scandalous. ” Registration is a form of government subsidy, and the Government may choose not to subsidize speech that it finds offensive.25 The Court today strikes down a provision of the Lanham Act that has been on the books for over 70 years.26
He respectfully dissented from the majority’s expansion of First Amendment protections in this context.
Justice Gorsuch joined Justice Thomas’s dissent.27 He contended that the majority expands the scope of the First Amendment beyond what the text and history will bear.28 The Lanham Act’s bar on registering “immoral or scandalous” marks does not abridge the freedom of speech.29
It merely denies a government benefit rather than restricting speech itself. He would reverse the judgment of the Court of Appeals, emphasizing that the First Amendment does not require the government to register offensive marks. This view diverges from the majority by treating registration as a subsidy rather than a speech restriction.
Whether the “immoral or scandalous” provision of the Lanham Act is viewpoint-based?30
A trademark registration bar is viewpoint-based when it distinguishes between two opposed sets of ideas, favoring those aligned with conventional standards and disfavoring those hostile to them.31
Yes. The “immoral or scandalous” provision of the Lanham Act is viewpoint-based.3233 The statute on its face permits registration of marks that champion society’s sense of rectitude and morality but denies registration to marks that denigrate those concepts.34 In the established facts, the PTO refused marks such as YOU CAN’T SPELL HEALTHCARE WITHOUT THC and BONG HITS 4 JESUS because they inappropriately glamorized drug abuse or connected Jesus Christ with illegal drug use, yet it registered D.A.R.E.
TO RESIST DRUGS AND VIOLENCE and PRAISE THE LORD. The same pattern appears with religious references and support for terrorism, confirming that the PTO applies the bar to disfavor ideas that provoke offense rather than to regulate mode of expression alone.35
The “immoral or scandalous” provision of the Lanham Act is viewpoint-based.
Related opinions on this issue
Justice Breyer concurred in part and dissented in part.36 He agreed with the Court that the “immoral or scandalous” provision of the Lanham Act is viewpoint-based and cannot survive strict scrutiny. He also agreed that the provision cannot be saved by narrowing it to reach only “vulgar” marks.
He wrote separately to note that the provision may be unconstitutionally vague as well. He would interpret the word scandalous more narrowly in other respects to avoid constitutional problems while applying a proportionality analysis to the narrowed bar.
Chief Justice Roberts concurred in part and dissented in part.37 He agreed with the Court that the “immoral” portion of the “immoral or scandalous” bar cannot be sustained. But he did not agree that the entire provision must fall.
In his view, the “scandalous” portion of the provision can be interpreted in a viewpoint-neutral way to bar only marks that offend because of their mode of expression, such as those that are obscene, vulgar, or profane. He would uphold that narrower bar on the ground that refusing registration to such marks does not offend the First Amendment.
Whether the provision can be saved by narrowing it to cover only vulgar marks or by severing the “immoral” component?38
A court may interpret ambiguous statutory language to avoid serious constitutional doubts only if the interpretation is a plausible construction of the statute; it may not rewrite the statute to conform it to constitutional requirements.39
No. The provision cannot be saved by narrowing it to cover only vulgar marks or by severing the immoral component.40 The statute does not draw the line at vulgarity, lewdness, or profanity, and the ordinary meaning of scandalous encompasses both offensive ideas and offensive modes of expression.41 In the established facts, the PTO applied the bar to marks based on the ideas they conveyed about drugs, religion, and terrorism rather than solely on their mode of expression.42 Neither proposed construction is plausible, and the Court will not sever the immoral portion or adopt a limiting reading unsupported by the text.43
The provision cannot be saved by narrowing it to cover only vulgar marks or by severing the “immoral” component.44
Related opinions on this issue
Joined by Justice Breyer
Justice Sotomayor, joined by Justice Breyer, concurred in part and dissented in part.45 She agreed that the immoral portion is unconstitutional but argued that scandalous can reasonably be read more narrowly to target only obscenity, vulgarity, and profanity as a viewpoint-neutral content restriction.46 She would apply that construction to uphold the scandalous bar and reject the facial challenge.
She warned that the majority’s ruling will force registration of the most vulgar, profane, or obscene marks imaginable and that the coming rush to register such trademarks is eminently avoidable by adopting the narrower reading.