Facts
- Erik Brunetti, founder of the “FUCT” clothing brand, used the mark in commerce since the early 1990s and sought federal registration to deter knockoffs.
- A PTO examining attorney refused registration under Lanham Act §2(a), which barred marks consisting of or comprising “immoral” or “scandalous” matter.
- The examiner found “FUCT” to be vulgar and the phonetic equivalent of the past tense of “fuck,” making it “immoral” or “scandalous” under the statute.
- The Trademark Trial and Appeal Board affirmed the refusal, citing the mark’s vulgarity and the brand’s associated imagery and themes.
- Brunetti appealed, arguing that the “immoral or scandalous” bar violated the First Amendment.
Issues
- Whether Lanham Act §2(a)’s prohibition on registration of “immoral” or “scandalous” marks is facially invalid under the First Amendment’s Free Speech Clause.
- Whether the “immoral or scandalous” bar constitutes impermissible viewpoint discrimination in a trademark registration scheme.
- Whether the provision is substantially overbroad, and whether it can be saved by a narrowing construction limited to vulgar or profane “modes of expression.”
Decision
- The Supreme Court affirmed the Federal Circuit in a 6–3 decision authored by Justice Kagan.
- The Court held that the “immoral or scandalous” bar violates the First Amendment because it is viewpoint-based.
- The Court also characterized the provision as substantially overbroad, sweeping in a wide range of ideas deemed offensive.
- The Court rejected the government’s proposed narrowing construction limiting the bar to marks offensive due to their mode of expression (e.g., lewd or profane terms), concluding that such a rewrite was inconsistent with the statutory text and historical application.
- Separate opinions would have invalidated only the “immoral” portion while preserving a narrowed, viewpoint-neutral “scandalous” prohibition focused on obscenity, vulgarity, or profanity.
Legal Principles
- A trademark registration bar that discriminates based on viewpoint violates the First Amendment.
- Statutory terms that permit registration of speech aligning with accepted moral standards while denying registration to speech defying those standards operate as viewpoint discrimination.
- Courts will not adopt a “saving” construction that requires major rewriting of statutory text or contradicts long-standing administrative practice.
- A restriction sweeping broadly across offensive “ideas,” rather than targeting narrow categories of unprotected or regulable expression, risks substantial overbreadth under the First Amendment.
- Trademark registration is not treated as government speech, and the government may not condition registration on suppressing disfavored viewpoints.
Conclusion
The Court invalidated Lanham Act §2(a)’s “immoral or scandalous” registration bar on its face, holding that it discriminates against disfavored viewpoints and sweeps too broadly, so the PTO may not deny registration on that basis.