Congress May Not Bar Registration of "Immoral or Scandalous" Trademarks—But "Vulgar or Profane" Marks, Maybe

The Supreme Court rules that the bar on "immoral or scandalous" marks is viewpoint-based, but Chief Justice Roberts and Justices Breyer, Alito, and Sotomayor say that an exclusion of "vulgar or profane" marks would be viewpoint-neutral though content-based. (The other five Justices express no opinion on a hypothetical "vulgar or profane" mark ban.)

The federal trademark statute (the Lanham Act) provides various legal protections for registered trademarks, but bars the registration of (among other marks) disparaging, immoral, or scandalous trademarks. People are still free to use such marks, but they don't get the same kinds of legal protections against infringement of such marks that owners of other marks get.

In Matal v. Tam (2017), the Supreme Court held that the disparaging marks exclusion—applied there to the mark "The Slants," which the Patent and Trademark Office viewed as racially disparaging—was unconstitutionally viewpoint-based, and thus impermissible. In today's Iancu v. Brunetti, all the Justices concluded that the exclusion of "immoral" marks was also viewpoint-based; and six Justices (Justice Kagan, joined by Justices Thomas, Ginsburg, Alito, Gorsuch, and Kavanaugh) held the same about the exclusion of "scandalous" marks:

When is expressive material "immoral"? According to a standard [dictionary] definition, when it is "inconsistent with rectitude, purity, or good morals"; "wicked"; or "vicious." Or again, when it is "opposed to or violating morality"; or "morally evil." So the Lanham Act permits registration of marks that champion society's sense of rectitude and morality, but not marks that denigrate those concepts. And when is such material "scandalous"? Says a typical definition, when it "giv[es] offense to the conscience or moral feelings"; "excite[s] reprobation"; or "call[s] out condemnation." Or again, when it is "shocking to the sense of truth, decency, or propriety"; "disgraceful"; "offensive"; or "disreputable." So the Lanham Act allows registration of marks when their messages accord with, but not when their messages defy, society's sense of decency or propriety.

Put the pair of overlapping terms together and the statute, on its face, distinguishes between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them; those inducing societal nods of approval and those provoking offense and condemnation. The statute favors the former, and disfavors the latter. "Love rules"? "Always be good"? Registration follows. "Hate rules"? "Always be cruel"? Not according to the Lanham Act's "immoral or scandalous" bar.

The facial viewpoint bias in the law results in viewpoint-discriminatory application. Recall that the PTO itself describes the "immoral or scandalous" criterion using much the same language as in the dictionary definitions recited above. The PTO, for example, asks whether the public would view the mark as "shocking to the sense of truth, decency, or propriety"; "calling out for condemnation"; "offensive"; or "disreputable." Using those guideposts, the PTO has refused to register marks communicating "immoral" or "scandalous" views about (among other things) drug use, religion, and terrorism. But all the while, it has approved registration of marks expressing more accepted views on the same topics.

Here are some samples. The PTO rejected marks conveying approval of drug use (YOU CAN'T SPELL HEALTHCARE WITHOUT THC for pain-relief medication, MARIJUANA COLA and KO KANE for beverages) because it is scandalous to "inappropriately glamoriz[e] drug abuse." But at the same time, the PTO registered marks with such sayings as D.A.R.E. TO RESIST DRUGS AND VIOLENCE and SAY NO TO DRUGS—REALITY IS THE BEST TRIP IN LIFE..

Similarly, the PTO disapproved registration for the mark BONG HITS 4 JESUS because it "suggests that people should engage in an illegal activity [in connection with] worship" and because "Christians would be morally outraged by a statement that connects Jesus Christ with illegal drug use." And the PTO refused to register trademarks associating religious references with products (AGNUS DEI for safes and MADONNA for wine) because they would be "offensive to most individuals of the Christian faith" and "shocking to the sense of propriety." But once again, the PTO approved marks—PRAISE THE LORD for a game and JESUS DIED FOR YOU on clothing—whose message suggested religious faith rather than blasphemy or irreverence.

Finally, the PTO rejected marks reflecting support for al-Qaeda (BABY AL QAEDA and AL-QAEDA on t-shirts) "because the bombing of civilians and other terrorist acts are shocking to the sense of decency and call out for condemnation." Yet it approved registration of a mark with the words WAR ON TERROR MEMORIAL.

Of course, all these decisions are understandable. The rejected marks express opinions that are, at the least, offensive to many Americans. But as the Court made clear in Tam, a law disfavoring "ideas that offend" discriminates based on viewpoint, in violation of the First Amendment….

The majority also rejected the government's argument that "scandalous" should be read as limited to "obscene, vulgar, or profane" marks; that, the majority held, was just not a plausible interpretation of the statute. On this score, Chief Justice Roberts and Justices Breyer and Sotomayor disagreed.

What if Congress revised the statute to exclude vulgar or profane marks? (Outright "obscene" marks, in the sense of the sort of highly pornographic material that falls within the "obscenity" exception, are already practically forbidden, since distributing obscene material is generally an outright crime.)

Four Justices held that this would be constitutional: Roberts, Breyer, and Sotomayor thought the exclusion of "scandalous" marks already permissibly did just this; Alito disagreed about how this statute should be interpreted, but expressly said that "Our decision does not prevent Congress from adopting a more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas."

The five remaining Justices (all the Justices in the majority except Alito) expressly stated that they "say nothing at all about … a [hypothetical] statute limited to lewd, sexually explicit, and profane marks."

So we don't know for sure whether such a specific rule against registering vulgar and profane marks would be constitutional, though we know that it might be, and that this decision doesn't settle the matter.