Iancu v. Brunetti: Striking the Lanham Act's 'Immoral or Scandalous' Trademark Bar

Iancu v. Brunetti, 588 U.S. 388 (2019), completed the doctrinal work begun two years earlier in Matal v. Tam by holding that the Lanham Act’s prohibition on registering “immoral or scandalous” trademarks cannot survive the First Amendment. Writing for a six-Justice majority, Justice Kagan concluded that the bar, codified at 15 U.S.C. § 1052(a), is facially viewpoint-based: it approves marks that align with conventional moral sensibilities and refuses those that offend them, and viewpoint discrimination is the cardinal First Amendment sin. The case arose from artist Erik Brunetti’s effort to register FUCT, the name of his streetwear line, which the Patent and Trademark Office refused as scandalous. In affirming the Federal Circuit, the Court reaffirmed that trademark registration is not a subsidy the government may condition on the palatability of a mark’s message — even a deliberately provocative one.

At a glance

• Case: Iancu v. Brunetti, 588 U.S. 388 (2019), Docket No. 18-302
• Court: Supreme Court of the United States, on certiorari to the Court of Appeals for the Federal Circuit
• Decided: June 24, 2019 (argued April 15, 2019); 6-3
• Opinion: Justice Kagan, for the Court (joined by Thomas, Ginsburg, Alito, Gorsuch, and Kavanaugh); Alito concurring; Roberts, Breyer, and Sotomayor each concurring in part and dissenting in part (Breyer joining Sotomayor)
• Subject matter: Registrability under the Lanham Act of a mark deemed “immoral or scandalous,” and the First Amendment limits on registration bars
• Holding: The Lanham Act’s bar on registering “immoral or scandalous” marks discriminates on the basis of viewpoint and therefore violates the Free Speech Clause of the First Amendment

The FUCT mark and the road to the Court

Erik Brunetti co-founded a clothing line in 1990 under the name FUCT. Brunetti has said the letters stand for “Friends U Can’t Trust,” but the mark’s phonetic resemblance to a well-known vulgarity was very much the point of its edgy, anti-establishment branding. When Brunetti sought federal registration, the PTO examining attorney refused it under Section 1052(a), which at the time barred registration of any mark that “[c]onsists of or comprises immoral, deceptive, or scandalous matter.” The Trademark Trial and Appeal Board affirmed the refusal, reasoning that the mark communicated messages that were vulgar and therefore scandalous.

The Federal Circuit reversed on constitutional grounds, and the timing was decisive. By the time Brunetti’s appeal was decided, the Supreme Court had already handed down Matal v. Tam, 582 U.S. 218 (2017), striking down the adjacent “disparagement” clause of the same statute — the provision that had blocked the Asian-American band The Slants from registering their name. Tam had fractured into two plurality opinions, but the Federal Circuit read it as controlling and held the immoral-or-scandalous bar likewise unconstitutional. The government, represented by PTO Director Andrei Iancu, sought review, and the Supreme Court took the case to decide whether Tam’s logic reached the neighboring clause.

Viewpoint discrimination and the lesson of Tam

The majority’s analysis begins with common ground. Justice Kagan observed that although Tam’s Justices had split over rationale, “all the Justices agreed on two propositions. First, if a trademark registration bar is viewpoint-based, it is unconstitutional. And second, the disparagement bar was viewpoint-based.” The only real question in Brunetti, then, was whether the immoral-or-scandalous bar shared that fatal characteristic. The Court held that it plainly did.

Reading the statutory terms according to their ordinary meaning, the majority explained that the law “on its face … distinguishes between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them.” A mark expressing approval of a viewpoint society finds wholesome could be registered; a mark expressing the same idea in a manner society finds offensive could not. That asymmetry is the essence of viewpoint discrimination, which the First Amendment forbids because “the government may not discriminate against speech based on the ideas or opinions it conveys.” The Court reinforced the point with the PTO’s own record of inconsistent, morality-laden decisions — registering marks that praised drug abstinence or religion while refusing marks that took the opposite stance — demonstrating that the office had in fact wielded the bar to favor some views over others.

The government tried to save the statute by urging a narrowing construction: read “immoral or scandalous” to reach only marks that are offensive in their mode of expression — the lewd, the profane, the vulgar — rather than the ideas they convey. Such a limited bar, the government argued, would be viewpoint-neutral. The majority refused. The statutory language, it held, was not susceptible to that narrowing; the words “immoral” and “scandalous” reach a mark’s substance and message, not merely its packaging, and a court may not rewrite a statute to conform it to constitutional limits it was not drafted to respect.

A divided bench on how far to cut

The separate writings reveal a real disagreement about remedy rather than principle. Justice Alito concurred to stress that the decision does not prevent Congress from adopting a more carefully drawn, viewpoint-neutral statute barring vulgar marks, and to note that the First Amendment protects even speech deployed, as here, in “a marketing campaign” designed to shock.

Chief Justice Roberts, Justice Breyer, and Justice Sotomayor each agreed that the “immoral” prong could not be salvaged but parted ways over “scandalous.” Justice Sotomayor, joined by Justice Breyer, argued most fully that “scandalous” could reasonably be construed to cover only obscene, profane, or vulgar modes of expression — a reading that would be viewpoint-neutral and would spare the government from having to register “the most vulgar, profane, or obscene words and images imaginable.” On her view, the Court’s refusal to adopt that construction needlessly invited a coming wave of such registrations. The majority answered that its duty was to read the statute Congress wrote, not to redraft it, and that any narrower bar was Congress’s to enact.

Open questions

Brunetti struck a statute but left the underlying policy question open. Justice Alito’s concurrence and the partial dissents together sketch a roadmap: Congress remains free to prohibit registration of marks that are obscene, profane, or vulgar in their manner of expression, so long as the bar draws no distinction based on viewpoint. Whether Congress will legislate such a provision — and whether a “mode of expression” line can truly be policed without smuggling in viewpoint judgments — remains unresolved. Also unsettled after Tam and Brunetti is the precise doctrinal status of trademark registration itself: the Court has treated registration bars as speech regulations without definitively classifying registration as a limited public forum, a government subsidy, or something else, a characterization question the Court later took up in the context of the names clause.

Implications

• Content that offends can still be registered. A mark cannot be refused simply because it is vulgar, provocative, or morally objectionable; the PTO may not sit as a censor of a mark’s message.
• Viewpoint neutrality is the touchstone. After Tam and Brunetti, any registration bar that favors socially approved messages over disfavored ones is presumptively unconstitutional.
• The ball is in Congress’s court. The decision expressly leaves room for a narrowly drawn, viewpoint-neutral statute targeting obscene, profane, or vulgar modes of expression — but only if Congress writes one.
• Courts will not rewrite the Lanham Act to save it. The majority’s refusal to adopt the government’s narrowing construction signals that constitutional-avoidance readings have limits when statutory text will not bear them.

Frequently asked questions

What did Iancu v. Brunetti decide? The Supreme Court held that the Lanham Act’s prohibition on registering “immoral or scandalous” trademarks, 15 U.S.C. § 1052(a), violates the First Amendment’s Free Speech Clause because it permits the Patent and Trademark Office to engage in viewpoint discrimination.

How does Brunetti relate to Matal v. Tam? Tam (2017) struck the neighboring “disparagement” bar as viewpoint-based. Brunetti applied the same principle: because the immoral-or-scandalous bar favors marks aligned with conventional moral standards over those hostile to them, it too discriminates by viewpoint and is unconstitutional.

Can the government still refuse to register vulgar trademarks? Not under the immoral-or-scandalous clause as written. The dissenters argued a narrowed reading of “scandalous” could reach only obscene, profane, or vulgar modes of expression, but the majority declined to rewrite the statute, leaving any such bar to Congress.

Authorities and sources

• Iancu v. Brunetti, 588 U.S. 388 (2019), Docket No. 18-302 (decided June 24, 2019). Justia; Cornell Legal Information Institute; official slip opinion (PDF).
• Oral argument and case summary via Oyez.
• Vote (6-3), Kagan authorship, and the Alito, Roberts, Breyer, and Sotomayor separate writings corroborated by Wikipedia: Iancu v. Brunetti.
• Predecessor decision striking the disparagement clause: Matal v. Tam, 582 U.S. 218 (2017). Justia.