Following the Supreme Court’s decision, FUCT can be a registered trade mark in the United States, as Janet Satterthwaite, Potomac Law Group and Bob Kenney, Birch Stewart Kolasch & Birch, Members of the IP Emerging Issues team, explain
The IP Emerging Issues Team recently conducted a global survey of the law governing scandalous marks (which MARQUES members can download here). In the US, the First Amendment protecting free speech from Government interference caused the Court to strike down a law prohibiting disparaging marks. This started to set the US on a different path from most countries we surveyed, but left open the issue of scandalous marks. On 24 June, the Court also struck down the law against registration of scandalous and immoral marks.
The Court’s reasoning
|US Supreme Court
MARQUES readers may recall that two years ago, the US Supreme Court struck down the part of the US trade mark law that prohibits registration of marks that disparage any person living or dead. In Matal v. Tam, 582 US____ (2017), the Court overturned the USPTO’s refusal to register SLANTS by an Asian-American music band. This ruling on an obscure mark effectively shut down more famous attempts to cancel marks for the REDSKINS, the Washington DC American football team.
While the Court was divided in its reasoning, all the justices agreed that if the bar to registration is based on the viewpoint of the agency, then it is unconstitutional, and determining whether something is disparaging is based on a point of view, favouring some over others.
Fast forward to the Court’s review in 2019 of the bar on registration of “immoral or scandalous” marks, reviewing the refusal to register FUCT as a trademark for clothing. Following on from Tam, Justice Kagan wrote in Iancu v. Brunetti, 588 U.S. ____ that in Tam, the justices “found common ground in a core postulate of free speech law: The government may not discriminate against speech based on the ideas or opinions it conveys.”
The trade mark FUCT could therefore be registered. She cited many examples of where the PTO used the immoral or scandalous rule to prohibit registration of marks seen as pro drugs, (YOU CANT SPELL HEALTHCARE WITHOUT TCH) while approving those which favour anti-drug programs (D.A.R.E TO RESIST DRUGS AND VIOLENCE;) approving pro-religious marks (PRAISE THE LORD) while disapproving AGNUS DEI for safes or MADONNA for wine. As such, the Court concluded that the application of the rule was not viewpoint neutral.
The Government, defending the law, argued that the law could be construed more narrowly to apply only to marks that are lewd, sexually explicit or profane, as the government could ban that kind of speech because it is viewpoint neutral. The court held, however, that it was not able to commit “statutory surgery” and rewrite a statute by court opinion, but hinted that Congress could write a more narrowly tailored law.
While in this case the majority opinion joined by five justices controls, the dissenting opinions provide some clues to Congress on how to fix this. For Court watchers, the alignment of justices was interesting because the usual alignment of conservatives versus liberal justices interpreting a constitutional question did not happen. Kagan, a liberal (Obama), was joined by fellow liberal Justice Ginsberg (Clinton), and the conservatives Gorsuch (Trump), Alito (Bush 2), Thomas, (Bush 1) and Kavanaugh (Trump). Roberts, a conservative (Bush 2) and liberals Breyer (Clinton) and Sotomayor (Obama) concurred in part and dissented in part.
Alito’s brief concurring opinion accepts the majority conclusion but provides his roadmap for Congress to re-write the statute, noting that the decision “…does not prevent Congress from adopting a more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas.” The mark at issue in the case, he further wrote, “is not needed to express an idea and, in fact, as commonly used today, generally signifies nothing except emotion and a severely limited vocabulary.”
Justice Sotomayor, joined by Breyer, predicted a flood of obscene applications, and stressed that wherever possible, a statute should be construed to save it from unconstitutionality. With that principle in mind, she addressed the meaning of the terms “immoral” and “scandalous”. While agreeing with the majority that “there is no tenable way” to read the term “immoral” that would resolve the issues of viewpoint discrimination, she concluded that it is possible and reasonable to read the term “scandalous” as limited to “obscenity, vulgarity and profanity”, all of which are viewpoint neutral and subject to restriction which does not violate free speech rights. Sotomayor stressed that the terms “immoral” and “scandalous” should be treated as holding distinct, non-redundant meanings, not similar or redundant meanings, as the majority concluded. In other words, if they mean the same thing, why use both in the statute? Based on this reasoning, she concluded, the statute should be narrowly interpreted to partially uphold its constitutionality by construing the term “scandalous” to be limited to obscene, vulgar and profane marks.
Finally, Chief Justice Roberts followed similar reasoning as Sotomayor in his partial dissent, stating that the term scandalous can be read “more narrowly to bar only marks that offend because of their mode or expression – marks that are obscene, vulgar or profane.”
Over to Congress
We can expect to see INTA or the USPTO drafting new, more narrowly tailored legislation to ban obscene, vulgar or profane marks. Nevertheless, even if Congress amends the law in line with the Court’s ruling, the US law against scandalous or immoral will be generally more narrow than those of most other jurisdictions we surveyed. In the meantime, we expect that applicants will be lining up to file for profane marks, and the numerous profane applications suspended pending the Court ruling will likely now be examined and approved for publication.