Portions of Lanham Act Unconstitutional

Lanham Act Unconstitutional

Lanham Act Unconstitutional

The U.S. Supreme Court held that additional portions of the Lanham Act were unconstitutional because they represented viewpoint discrimination and thus violated the First Amendment’s right to free speech.

The U.S. Supreme Court has again held that portions of the Lanham Act are unconstitutional.  This time, they have ruled that the portion of the Lanham Act which refused registration of immoral or scandalous trademarks violates the First Amendment.  Previously, the Court declared that the Lanham Act’s ban on registering marks that disparage any person, living or dead was unconstitutional.

This time, they have held that additional portions of the Lanham Act Unconstitutional ban on immoral or scandalous trademarks is viewpoint discrimination and thus also violates the First Amendment.

Trademark Application

The mark at issue was based on a trademark application which was filed with the USPTO for the mark FUCT. The United States Patent and Trademark Office (USPTO) denied the application under a provision of the Lanham Act (referred to herein as “Trademark Law”) that prohibits registration of trademarks that “[c]onsist[ ] of or comprise[ ] immoral[ ] or scandalous matter.” On appeal, the registrant brought a First Amendment challenge to the “immoral or scandalous” bar.

Trademark Registration

Under the Trademark Law, the USPTO administers a federal
registration system for trademarks. Registration of a mark is not mandatory. The owner of an unregistered mark may still use it in
commerce and enforce it against infringers.

However, registration gives trademark owners valuable benefits. For example, registration constitutes “prima facie evidence” of the mark’s validity. Registration serves as “constructive notice of the registrant’s claim of ownership,” which eliminates some defenses in infringement actions. The general rule is that a trademark is eligible for registration, and receives the benefits of registration, if it is “used in commerce.”

Refusal of Trademark Applications

However, the Trademark Law directs the USPTO to “refuse[] registration” of certain marks, including:

  • Marks that “so resembles” another mark as to create a likelihood of confusion;
  • Marks that are “merely descriptive” of the goods on which it
    is used;
  • Marks containing the flag or insignia of any nation or State; and (relevant to this case)
  • Marks which consist of or comprise immoral or scandalous matter.

Scandalous and Immoral Trademarks

The determination of whether a mark was immoral or scandalous was made by the USPTO.  In making this determination, the USPTO has to determine whether a substantial composite of the general public would find the mark shocking to the sense of truth, decency, or propriety; giving offense to the conscience or moral feelings; calling out for condemnation;
disgraceful; offensive; disreputable; or vulgar.

Lanham Act Unconstitutional Viewpoint Discrimination

The argument, which the Court found persuasive, was that the refusal to register certain trademarks created viewpoint discrimination.  This was based on the fact that the USPTO refused to register marks communicating “immoral” or “scandalous” views about (among other things) drug use, religion, and terrorism. However, it approved registration of marks expressing more accepted views on the same topics.  According to the court this represented viewpoint discrimination which was prohibited by the First Amendment.

If you have a question about today’s ruling or about trademark in general, please contact one of our Trademark Attorneys.