Several members of the Supreme Court expressed skepticism Monday over the breadth of a federal law that forbids the registration for “immoral” or “scandalous” trademarks.
Treading carefully, and never uttering a vulgar word, the justices examined the claim of entrepreneur Erik Brunetti whose bid for a trademark for his clothing brand – called FUCT – was rejected in 2011 by the Patent and Trademark Office.
A lawyer for Brunetti told the justices that a provision of the Lanham Act that forbids registration of “immoral” or “scandalous” trademarks violates the First Amendment.
Justice Neil Gorsuch indicated at one point that the law was vague and it had been enforced arbitrarily. Gorsuch said the government had allowed some trademarks and rejected others that were “remarkably similar.” He declined to provide examples, “I really don’t want to do that,” he said, but he suggested the government was inconsistently enforcing the law.
Justice Elena Kagan and Justice Sonia Sotomayor worried about how many words could get caught up in the law with Kagan suggesting that Congress could pass a law with a more narrow subset of terms that could be rejected. And Justice Samuel Alito suggested at one point that the law might require extra scrutiny because it could make the government discriminate on the viewpoint of one speaker over another, something that courts rarely allow.
But Alito and others acknowledged that there could be a compelling government justification for the law and feared what would happen if the Court struck down the provision at issue. He thought there could be a “mad scramble” to register vulgar terms.
Chief Justice John Roberts worried about the impact of striking the law on obscene words and Breyer expressed concerns that the registration of racial slurs might proliferate.
Gorsuch seemed to sum up the state of play by asking “where’s the line here?”
Although Brunetti founded the line in 1990, he only sought to register the mark with the US Patent and Trademark Office in 2011 in order to obtain benefits such as expanding rights against others attempting to use the same mark.
But he was refused. The office said the word was the “phonetic equivalent” of the past tense of what sounds like a vulgar term. It rejected Brunetti’s request determining that federal law prohibits the registration of trademarks that consist of “scandalous” subject matter.
Brunetti says, his company’s name stands for FRIENDS U CAN’T TRUST. But no one seemed to buy that explanation.
If the justices rule in favor of Brunetti, they could open the doors to more so called “scandalous” marks in the marketplace and even broaden a category of speech protected by the Constitution.
The United States Court of Appeals for the Federal Circuit held that the provision at issue is an “unconstitutional restriction of free speech.” The lower court stressed that the Patent and Trademark Office has also inconsistently applied the provision in a way that creates uncertainty. For example, the government has approved marks like “FUGLY.”
The appeals court said that while it found “such marks in commerce discomforting” and was “not eager to see a proliferation” of them in the marketplace, the First Amendment “protects private expression, even private expression which is offensive to a substantial composite of the general public.”
Two years ago, the Supreme Court struck down a separate provision of the law that prohibited the registration of trademarks that could disparage persons, institutions, beliefs or national symbols.
The justices held that the so called “disparagement provision” violated the First Amendment by discriminating based on a particular view point. The opinion was a victory for an Asian-American musician who named his rock band “the Slants” in an attempt to take back a term that was once directed as an insult. His trademark request was denied as disparaging to “persons of Asian descent,” but the Supreme Court ultimately ruled in his favor.
