“Immoral Or Scandalous” Bar On Trade Mark A Violation Of Free Speech? – Us Supreme Court Ruling

INTRODUCTION

The Lanham Act, also known as the Trademark Act of 1946 is a US Federal statute that governs the trademarks, service marks and unfair competition, similar to the Trademarks Act of India. Under the act any trademark which comprises of immoral, deceptive or scandalous matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols or bring them into contempt or disrepute or is scandalous in nature cannot be registered. Any and all such mark that may insult or upset the feelings of a particular sect of people or a mark that corresponds to a word which is offensive in nature or may be a slang, are all “immoral or scandalous” marks and their registration is prohibited under the Lanham Act.

The United States Supreme Court in its recent judgement of LANCU v. BRUNETTI looked into this particular aspect of the Lanham Act. The Supreme Court carefully scrutinised the constitutionality of such a restriction and went on to adjudge that the “immoral or scandalous” bar on the registration of trademarks violates the right to freedom of speech and expression guaranteed by the First amendment to the US Constitution as it “discriminates on the basis of viewpoint”.

BACKGROUND OF THE CASE

The respondent Erik Brunetti and his partner were running a clothing brand by the name of “FUCT” which was an abbreviation for “Friends you can’t trust”. Brunetti wanted to get this mark registered under the Lanham Act. Both the PTO examining attorney and the mark Trial and Appellate board declined this request. The reason they gave for such denial was that the word “FUCT” was “highly offensive” and “vulgar” and had “decidedly negative sexual connotations”. The mark in question was phonetically very similar to an offensive slang in popular culture and thus it was denied registration for being immoral and opposed to standards of society.

The board also considered evidence on how Brunetti used this mark, they found that Brunetti’s website and products contained imagery of anti-social behaviour. The board finally concluded that the term and the way it was used was extremely offensive and thus declined the request for its registration. Following the decision of the appeal board, Brunetti appealed to the US Court of appeals which then revered the board’s decision, held this bar to violate the First Amendment and thus unconstitutional. The PTO then appealed to the Supreme Court which upheld the Court of Appeal’s decision.

ANALYSIS OF THE ISSUE

The US Supreme Court first considered the challenge to Trademark registration under the First amendment in MATAL v. TAM[1] in 2017.[2] In the said case, there was denial of trademark registration due to the mark criticizing anyone living or dead. They held that the disparagement clause was discriminatory as it favoured one view point over another. The government cannot make laws favouring one view point and completely disregarding another. The Supreme Court unanimously held that if a trademark registration bar is view-point based then it would be unconstitutional and that the disparagement clause of the Lanham Act was view-point based as it allowed registration of trademark if it was positive about a person or group of people but not if it was derogatory.

In the present case ofBrunetti, the bar on the registration of so called “Immoral or Scandalous” marks was analysed. The court observed that the “immoral or scandalous” bar similarly discriminates on the basis of viewpoint. It observed that the Lanham Act allows the registration of marks that are in line with society’s sense of decency and morality, but not when such marks challenge them. The act on the face of it discriminates between two sect of ideas and disfavours the one which challenges society’s idea of morality or “provoking offence and condemnation”, to quote the court.[3]

The court further gave examples as to the various marks that were denied registration because of them being “scandalous” in nature, one of them being “MARIJUANA COLA”, the same was denied registration due to it “glamorising drug abuse”. PTO also refused registration tomark “BONG HITS 4 JESUS” stating the reason to be “Christians would be morally outraged by a statement that connects Jesus with illegal drug use”. But, on the other hand, PTO approved marks such as “PRAISE THE LORD” for a game or “JESUS DIED FOR YOU” for clothing, as both of them are in line with religious beliefs and morals.

The above marks that were not registered were very highly offensive to most Americans, but in TAM the court clearly observed that “ideas” that may tend to offend people cannot be denied registration and that it violates the first amendment.

The Court observed that the distinction made in Lanham Act does not stop at marks that are, irrespective of their view point, offensive in nature or whose mode of expression is offensive. It covers all such marks that may tend to be “immoral” in nature which is very subjective from person to person. It discriminates on the basis of viewpoint which hinders the right of free speech in a society as Trademarks are commercial expression of speech. Thereby allowing Brunetti to register his mark and declaring the bar to be unconstitutional.

CONCLUSION

The implication of such a judgement is far reaching, people would now be able to register marks that they have created their goodwill with. Initially the marks that were considered vulgar or obscene in nature would now be registered under the Act. Legislative action was also suggested in the judgement to make sure that the law is not abused as with the judgement, people will try to register marks that are indeed disrespectful in nature or are entirely vulgar, irrespective of their view-point. The judgement will have far reaching reforms as marks, that are although not obscene but were denied registration due to orthodox thinking or so called morals of the society/moral policing, will now to able to gain protection under the act in the US.

The judgement is a landmark one and can work as a guiding force for all other countries, including India, which impose such restrictions on trademark registration; to amend their laws and pave way for free speech and expression. If not a complete removal of such restriction, at least a reduction in the sternness of the provision is certainly necessary with the changing attitude of the youth and the society.

Author:  Sanjeevani Mehrotra, Student of ILS Law College, Year IV-BA LLB , Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at niharika@khuranaandkhurana.com

References:

[1]Matal v. Tam, 582 U.S. 15 (2017)

[2]Pankhuri Agarwal, Revisiting the Free Speech, Morality and Trademark Law Debate (Part I), SpicyIP, !7-10-19 13:49, https://spicyip.com/2019/09/spicyip-fellowship-2019-20-fuct-the-uspto-revisiting-free-speech-under-trademark-law-part-i.html

[3]Lancu v. Brunetti, 588 U.S. 18, 6 (2019)

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