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Supreme Court Strikes Down Ban on “Immoral” or “Scandalous” Trademark
Wednesday, 21 August 2019
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Supreme Court Strikes Down Ban on “Immoral” or “Scandalous” Trademark

On June 24, 2019, the United States Supreme Court handed down a 6-3 decision in favor of Erik Brunetti in Iancu v. Brunetti, 139 S.Ct. 2294 (2019). In Iancu, the Court held that the Lanham Act (15 U.S.C. §§ 1051 et seq.), which is the set of statutory laws governing federal trademarks, prohibition on the registration of “immoral” or “scandalous” trademarks infringes on the First Amendment protection of freedom of speech.

In 1990, Erik Brunetti launched his brand of clothing “Friends U Can’t Trust.” This name became known, and marketed by, its acronym. When reading the acronym on articles of clothing, it was synonymous in sound for a well-known term of profanity. Brunetti had been trying to acquire trademark protection for years so he could protect against copycat companies and clothing lines. Brunetti repeatedly tried trademarking his brand but was unable to do so with the United States Patent and Trademark Office. Trademark examiners cited the Lanham Act, which bars protection for words deemed “scandalous.”

Justice Elena Kagan authored the majority opinion, and five justices joined the majority: Clarence Thomas, Ruth Bader Ginsburg, Samuel Alito, Neil Gorsuch, and Brett Kavanaugh. All nine justices agreed that the federal law banning “immoral” trademarks was too broad and that it would allow the government to grant trademarks to messages it approved and deny trademarks for messages it disapproved. Whether Congress will now act to revise those portions of the Lanham Act to more narrowly define purported “immoral” or “scandalous” marks, while balancing free speech protections, is a question going forward.

Brunetti’s case got a “boost” from a prior case in which the Supreme Court ruled that an Asian American band, called “The Slants,” could not be denied trademark protection just because the name used a term viewed as racially disparaging. Matal v. Tam, 137 S. Ct. 1744, 198 L. Ed. 2d 366 (2017). Such acceptance of trademark application highlighted the inconsistencies in consideration and application of the Lanham Act by the government office.

Whether the Supreme Court’s ruling will usher forth an onslaught of offensive and possibly racist applications seeking trademark protections remains to be seen. However, in the meantime, the Court has demonstrated that the Constitutional protection afforded by the First Amendment’s freedom of speech clause is paramount even for individuals and entities looking to utilize such terms and logos in the American marketplace.

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