• ashlie major

Supreme Court recognizes trademark applicants are getting ‘fuct’ over by the Lanham Act

Yes, you read that right. Rejoice—for the provision in the Lanham Act barring registration of “immoral or scandalous” marks have been lifted. But be quick, as this allowance of autonomy in trademark registration may be short-lived.

On June 24 of 2019, the Supreme Court in Brunetti declared unconstitutional a provision in Section 2(a) of the Lanham Act, which provides that a trademark cannot be refused registration “on account of its nature” unless, inter alia, it “[c]onsists of or comprises immoral . . . or scandalous matter.” Simply put, this provision allowed the U.S. Patent and Trademark Office (PTO) to abuse this provision and discriminate against marks that do not adhere to a particular viewpoint; and discriminate they did. The PTO rejected the mark ‘You Can’t Spell Healthcare Without THC’ yet approved the mark ‘D.A.R.E. to Resist Drugs and Violence’ claiming that the former mark “inappropriately glamorized drug use.” Similarly, the PTO denied registration for the mark ‘Bong Hits 4 Jesus’ because Christians would be “morally outraged” by a mark that would associate Jesus Christ with (then) illegal drug use but approved the mark ‘Jesus Died for You’ for clothing.

It seems to me like unconventional business owners should have been disreputably outraged by the PTO’s inequitable decision-making and the unfair provisions of the Lanham Act.

Not only does Section 2(a) of the Lanham Act allow for viewpoint discrimination, but it is in direct violation of the First Amendment as well. The “immoral and scandalous” provision goes against the very core of free speech law which forbids discrimination against speech based on the ideas and opinions it expresses.

“Viewpoint discrimination is poison to a free society.”

This means that all-female rock band, Thunderpussy, can finally be afforded the federal trademark protection they deserve—for now, at least. We’re not yet in the clear. Justice Alito, in his concurrence, note that the Supreme Court’s decision does not prevent Congress from passing a more “carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas.” Though, there is a First Amendment argument against a provision specifically barring ‘vulgar terms’ too, which would have to be written in another post.

My point is, if you are looking to register a trademark that may be considered immoral, indecent, scandalous, profane, or the like, then your time is now.

Featured image by Konstantinos Papadopoulos on Unsplash.

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