Iancu v. Brunetti
Does the Lanham Act's prohibition on the federal registration of 'immoral or scandalous' trademarks violate the First Amendment's Free Speech Clause by discriminating based on viewpoint?
The Decision
6-3 decision · Opinion by Elena Kagan · 2019
Majority Opinion— Elena Kaganconcurring ↓dissent ↓
The Supreme Court ruled 6–3 that the Lanham Act's ban on registering 'immoral or scandalous' trademarks violates the First Amendment. The majority opinion was authored by Justice Elena Kagan and joined by Justices Thomas, Ginsburg, Alito, Gorsuch, and Kavanaugh. The Court affirmed the Federal Circuit's judgment in favor of Brunetti.
Justice Kagan's opinion focused closely on the text of the statute. She explained that the "immoral" portion of the clause plainly discriminates based on viewpoint: it empowers the government to deny registration to marks that express ideas society considers immoral while allowing registration of marks that express ideas society considers virtuous or morally acceptable. The majority cited examples from the USPTO's own examination records showing that the provision had been applied in exactly this lopsided way — marks celebrating drug use were rejected while anti-drug marks were registered, and marks seen as offensive toward religion were rejected while marks promoting religion were approved.
The Court rejected the government's proposed narrowing construction of the statute. The government had urged the Court to read the word 'scandalous' as covering only marks that are vulgar, profane, or obscene in their mode of expression — and to essentially ignore the word 'immoral.' Justice Kagan explained that this approach would require the Court to substantially rewrite the statute rather than merely interpret it. The word 'immoral' could not be wished away, and even 'scandalous' as commonly understood reaches ideas and viewpoints that offend prevailing moral standards, not merely vulgar modes of expression.
Building directly on the framework from Matal v. Tam, the majority reaffirmed that the government may not discriminate against speech based on the viewpoint it expresses, even within a federal benefits program like trademark registration. The Court acknowledged that its decision might lead to the registration of marks that many people find deeply offensive, but emphasized that the First Amendment does not allow the government to be the arbiter of which ideas are morally acceptable. The principle against viewpoint discrimination, the Court stressed, is a bedrock of free speech law and protects even expression that much of society finds distasteful.
Concurring Opinions
Justice Alito wrote a brief concurrence emphasizing that the decision did not prevent Congress from enacting a more narrowly drawn statute that targets only obscene, vulgar, or profane marks in a viewpoint-neutral way, effectively inviting legislative action to address the issue. Justice Breyer's separate opinion, while categorized as concurring in part and dissenting in part, also offered a notable critique of the broader framework the Court uses in free speech cases, arguing for greater flexibility and less reliance on rigid doctrinal categories.
Dissenting Opinions
John Roberts
Chief Justice Roberts agreed that the 'immoral' portion of the statute constituted viewpoint discrimination and was unconstitutional, but he disagreed about the word 'scandalous.' He argued that 'scandalous' could reasonably be given a narrow, viewpoint-neutral construction limited to marks that are obscene, vulgar, or profane in their mode of expression, and that the Court should have adopted that saving interpretation rather than striking the entire provision.
- The word 'scandalous' has a well-established meaning that can encompass vulgarity and obscenity — concepts that focus on how something is said, not what idea is expressed — and courts regularly adopt narrowing constructions to save statutes from constitutional defects.
- Refusing to register obscene or profane marks does not discriminate based on viewpoint because it applies regardless of the underlying message; a mark using a vulgar word would be denied whether it promoted or opposed any particular idea.
Sonia Sotomayorjoined by Stephen Breyer
Justice Sotomayor agreed that the 'immoral' bar was unconstitutional viewpoint discrimination but argued at length that the 'scandalous' bar could and should be saved through a narrowing construction. She contended that reading 'scandalous' to cover only obscene, vulgar, or profane marks — regardless of viewpoint — would be a modest and reasonable interpretation consistent with the statute's history and purpose.
- A long history of trademark examination practice supports reading 'scandalous' as encompassing marks that are shocking due to their vulgarity or profanity, not merely their ideological content, and this interpretation would render the provision viewpoint-neutral.
- The Court's refusal to adopt this narrowing construction means that the government will now be compelled to register marks containing the most graphic obscenity and profanity, a result that could have been avoided without sacrificing free speech principles.
- The majority's approach sweeps too broadly by conflating the clearly viewpoint-based term 'immoral' with the term 'scandalous,' which has an independent and constitutionally permissible application.
Stephen Breyer
Justice Breyer wrote separately to express his broader concern that the Court's rigid categorical approach to First Amendment analysis — drawing bright lines between viewpoint discrimination, content discrimination, and content-neutral regulation — is too inflexible. He favored a more proportionality-based approach that would weigh the government's regulatory interest against the restriction on speech.
- The line between viewpoint-based and content-based restrictions is often unclear in practice, and a more flexible, proportionality-based analysis would better serve the First Amendment's core purposes.
- Even under a less categorical approach, the 'scandalous' bar as narrowly construed — covering only highly vulgar or obscene marks — would likely survive scrutiny because the government's interest in not promoting such material is significant and the burden on speech is modest, since applicants remain free to use their marks without registration.
Background & Facts
Erik Brunetti is an artist and entrepreneur who founded a clothing brand called "FUCT" in 1990. The name, which Brunetti described as an acronym, is also widely understood as a phonetic equivalent of a common vulgar word. When Brunetti applied to register "FUCT" as a federal trademark with the United States Patent and Trademark Office (USPTO), the agency refused. It relied on a provision of the Lanham Act — the federal statute governing trademarks — that barred registration of marks that "consist of or comprise immoral … or scandalous matter." The USPTO concluded that "FUCT" fell squarely within that ban because of its vulgar connotation.
Brunetti appealed the USPTO's refusal to the Trademark Trial and Appeal Board, which upheld the denial. He then took his case to the United States Court of Appeals for the Federal Circuit, which handles patent and trademark appeals. The Federal Circuit sided with Brunetti. Drawing on the Supreme Court's recent decision in Matal v. Tam (2017) — which had struck down a separate Lanham Act provision barring the registration of "disparaging" trademarks — the Federal Circuit concluded that the "immoral or scandalous" bar suffered from the same constitutional defect: it allowed the government to discriminate against trademarks based on the viewpoints they expressed.
Andrei Iancu, the Director of the USPTO (and Under Secretary of Commerce for Intellectual Property), petitioned the Supreme Court to review the case. The government argued that the "immoral or scandalous" clause could be interpreted more narrowly in a way that would save it from constitutional problems — specifically, by reading it to cover only marks that are vulgar or obscene in their mode of expression, rather than marks that convey disapproved ideas. The Supreme Court agreed to hear the case to resolve whether this longstanding provision of trademark law could survive First Amendment scrutiny.
The case attracted significant attention from free speech advocates, intellectual property scholars, and the business community. It raised fundamental questions about the extent to which the government may use the trademark registration system to discourage speech it considers offensive or indecent, and whether declining to provide the benefits of registration amounts to punishing certain viewpoints.
The Arguments
The government argued that the Lanham Act's ban on 'immoral or scandalous' trademarks could and should be read narrowly — not as targeting particular ideas or viewpoints, but as a viewpoint-neutral restriction on vulgar, obscene, or profane modes of expression. Under this reading, the provision would be a permissible regulation of how something is expressed, not what idea is being conveyed.
- The 'scandalous' portion of the statute can be given a limiting construction that focuses on the vulgarity of the mark itself — how it is expressed — rather than any ideological message, making it viewpoint-neutral.
- Federal trademark registration is a government benefit, not a restriction on speech; denying registration does not prevent anyone from using a mark in commerce, so the constitutional stakes are lower.
- The government has a legitimate interest in not associating itself with or promoting vulgar and obscene material through the federal registration system.
Brunetti argued that the 'immoral or scandalous' provision is unconstitutional viewpoint discrimination on its face. The statute allows government officials to decide which marks convey acceptable moral messages and which do not, effectively favoring marks that align with mainstream moral values and penalizing those that challenge or offend them.
- The plain text of the statute — targeting marks that are 'immoral' — necessarily requires the government to take sides on matters of morality and ideology, which is the essence of viewpoint discrimination.
- The Supreme Court's decision in Matal v. Tam already established that the government cannot use the trademark registration system to disfavor speech based on the viewpoints it conveys, and the same logic applies here.
- The government's proposed narrowing construction would effectively rewrite the statute, ignoring the word 'immoral' entirely and giving 'scandalous' a meaning it does not naturally bear.