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


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”.


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.


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.


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


[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)

Leave a Reply


  • March 2023
  • February 2023
  • January 2023
  • December 2022
  • November 2022
  • October 2022
  • September 2022
  • August 2022
  • July 2022
  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • June 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • March 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010