Photo Credit: J. Scott Applewhite, Supreme Court Sides with “Subversive” Clothing Designer in First Amendment Case, The Washington Post (June 24, 2019), https://www.washingtonpost.com/politics/courts_law/supreme-court-sides-with-apparel-maker-who-said-government-violated-first-amendment-by-denying-subversive-clothing-line-trademark/2019/06/24/717eb058-968a-11e9-916d-9c61607d8190_story.html?noredirect=on.
By: Kimberly Massey
Online Editor, American Journal of Trial Advocacy
Trademark registration is one of a few ways trademark owners can receive federal protection for their trademarks. Trademarks are governed by the Lanham Act. Under the Lanham Act, trademark owners can register their trademarks on the principal register or the supplemental register. However, not just anything can be registered. Individuals could not register trademarks that were “immoral . . . or scandalous” until the recent Supreme Court case Iancu v. Brunetti. Before Iancu v. Brunetti, individuals could not register trademarks that disparaged others. While these limitations on registrability have been struck down, other limitations still exist.
The two limitations that have now been struck down—trademarks that are disparaging and trademarks that are scandalous or immoral—were both struck down on First Amendment grounds. Because the federal government is involved in the registration of trademarks, First Amendment free speech issues are bound to come up. The government cannot “abridge[e] the freedom of [private] speech” under the First Amendment. If the government did “abridge the freedom of private speech,” then the government would be participating in what is sometimes called viewpoint discrimination, which “is forbidden.” The Court has held several times that merely because something is offensive to some does not mean that the government may regulate that speech. These provisions for censoring speech only apply to private speech and not to government speech. Fortunately for trademark owners, the Court has held that “[t]rademarks are private, not government, speech.” In hindsight, it makes sense that the Court ruled the way it did in both Tam and Brunetti because trademarks are private speech and thus cannot be censored by the government.
Matal v. Tam
In Matal v. Tam, Simon Tam sought trademark registration for his band The Slants,but the United States Patent and Trademark Office (“PTO”) denied him registration under the Lanham Act’s Disparagement Clause. The Disparagement Clause prohibited registering trademarks “which may disparage . . . persons, living or dead.” The PTO found that the use of the word “slants” in the band’s name disparaged Asian-Americans. As an Asian-American, Tam’s goal in registering the trademark for the band’s name was to help Asian-Americans reclaim the normally derogatory word. The attorney who examined Tam’s trademark registration application denied Tam registration because enough people would find and have found the trademark offensive. The PTO has said in the past that a trademark owner’s good intentions are not relevant to registration if the trademark is disparaging. Tam appealed the PTO’s denial to the Trademark Trial and Appeal Board (“TTAB”), and eventually to the Federal Circuit before the Supreme Court granted certiorari. Tam’s appeal to the TTAB failed, which is when he went to the Federal Circuit. The Federal Circuit held that the denial constituted viewpoint discrimination and that the PTO could not satisfy strict scrutiny. Thus, the Federal Circuit held that the Disparagement Clause was unconstitutional. The government then filed the petition for certiorari which the Court granted.
The government argued “(1) that trademarks [were] government speech, not private speech, (2) that trademarks [were] a form of government subsidy, and (3) that the constitutionality of the disparagement clause should be tested under a new ‘government-program’ doctrine.” Addressing the government’s first argument, the Court stated that
[i]n light of all of this, it is far-fetched to suggest that the content of a registered mark is government speech. If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently. It is saying many incoherent things. It is expressing contradictory views. It is unashamedly endorsing a vast array of commercial products and services. And it is providing Delphic advice to the consuming public.
The Court went on to point out that government messages are not generally conveyed through trademarks, and registration on the principal register is not precluded when a trademark may express some other viewpoint. The Court distinguished trademarks from traditional government-speech cases and also noted the slippery slope that would be created by categorizing trademarks as government speech. The Court rejected the government’s first argument and held that “[t]rademarks are private, not government, speech.”
In addressing the government’s second argument, the Court noted that federally registering a trademark is not like the government subsidizing speech like funding for family planning services in Rust v. Sullivan or the artists receiving cash grants in National Endowment for Arts v. Finley because trademark owners applying for registration do not receive money from the PTO. In fact, registration applicants must pay the PTO for filing the registration application. If trademarks were government subsidies, then copyrights, patents, and several state government registration schemes would be government subsidies as well.
Finally, the Court addressed the government’s third argument—that there should be a new “government-program” doctrine. This new doctrine would merely be a combination of government speech and government subsidy of speech. However, the Court noted that whether something is offensive “is a viewpoint” and “that the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.”
Concluding, the Court stated that the Disparagement Clause would not survive the test from Central Hudson Gas & Electric Corp. where speech restrictions “must serve a substantial interest, and [the restrictions] must be narrowly drawn.” In other words, the restriction cannot be more restrictive than necessary to achieve its purpose. There are plenty of commercial speech products on the market that denigrate others, but suppressing such speech merely because it could “lead to political or social volatility” would endanger free speech. Thus, the Court unanimously held that the Disparagement Clause of the Lanham Act violates the First Amendment’s Free Speech Clause.
Iancu v. Brunetti
Similar to Matal v. Tam, Erik Brunetti (Brunetti) challenged the PTO’s denying him trademark registration of his brand—FUCT—as a violation of the First Amendment Free Speech Clause. The PTO denied Brunetti’s registration under the same subsection of the Lanham Act as it did in Matal v. Tam, but under a different clause. In Tam, the PTO denied trademark registration under the Disparagement Clause of the Lanham Act. The Court held that the Disparagement Clause violated the Free Speech Clause of the First Amendment. So, if the Disparagement Clause violated the First Amendment, and the immoral or scandalous clause likewise is viewpoint discrimination, then it must also violate the First Amendment.
Right off the bat, the Court held that the immoral or scandalous clause is viewpoint-based. To help support its conclusion, the Court looked up the definitions of the words “immoral” and “scandalous” in dictionaries. Based on the dictionary definitions of the words, the Court pointed out how trademarks that “aligned with conventional moral standards” were favored while others that were not so morally aligned were disfavored. The immoral or scandalous clause in the Lanham Act is overly broad and suppresses viewpoints. Thus, the Court ruled that Lanham Act’s ban on immoral or scandalous trademarks violates the First Amendment.
While the majority opinion stopped there, four of the justices filed concurring opinions. Justice Alito’s concurrence mostly noted that allowing the government to determine what is immoral or scandalous could “easily be exploited for illegitimate ends.” Justice Alito went on to say that if Congress wants to adopt a new statute that is “more carefully focused,” then Congress should do so, but the Court “cannot substitute a new statute for the one now in force.” Chief Justice Roberts, however, did not agree that the ban violated the First Amendment because trademarks can still be used in commerce without being registered. Justice Breyer and Justice Sotomayor both filed concurring opinions and Justice Breyer also joined Justice Sotomayor’s. Justice Breyer ultimately said that he agreed that the ban on immoral trademarks violated the First Amendment, but that the ban on scandalous trademarks did not. Justice Sotomayor’s concurrence echoes Justice Breyer’s in that she also agreed that the ban on immoral trademarks violated the First Amendment, but the ban on scandalous trademarks did not violate the First Amendment.
Court was more divided about the free speech issue of immoral or scandalous
trademarks than disparaging trademarks, the Court ultimately found in favor of
trademark owners and their free speech rights. This win for trademark owners does not mean
that anything can be registered merely because the trademark comprises of a
racial slur or an expletive. The
trademarks will still have to meet other requirements to be registered.
Whether Congress will respond to the
Court’s decisions with changes to the law is yet to be seen, but, for now,
trademark owners have fairly broad subject matter under which to register their
 Unregistered trademarks can still receive some federal protection under 15 U.S.C. § 1125 (2018).
 15 U.S.C. §§ 1051-1141n (2018). Trademarks owners can also turn to state statutes for remedies.
 15 U.S.C. §§ 1051-1072; Matal v. Tam, 137 S. Ct. 1744, 1752 (2017).
 15 U.S.C. §§ 1091-1096; Tam, 137 S. Ct. at 1752.
 See 15 U.S.C. § 1052 (2018) (listing reasons that a trademark could be denied).
 15 U.S.C. § 1052(a) (2018).
 139 S. Ct. 2294 (2019).
 See Matal v. Tam, 137 S. Ct. 1744, 1753 (2017) (The Disparagement Clause “appeared in the original Lanham Act and has remained the same to this day.”).
 See 15 U.S.C. § 1052 (discussing additional limitations on trademarks).
 Iancu v. Brunetti, 139 S. Ct. 2294, 2297 (2019); Tam, 137 S. Ct. at 1751.
 U.S. Const. amend. I.
 Tam, 137 S. Ct. at 1763.
 See Texas v. Johnson, 491 U.S. 397, 414 (1989) (“If there is a bedrock principle underlying the First Amendment, it is that the government may not prohibit the expression of an idea simply because society finds the idea itself offensive or disagreeable.”); Cohen v. California, 403 U.S. 15, 26 (1971) (“[W]e cannot indulge the facile assumption that one can forbid particular words without also running a substantial risk of suppressing ideas in the process.”).
 Tam, 137 S. Ct. at 1758.
 Id. at 1760.
 137 S. Ct. 1744 (2017).
 Tam, 137 S. Ct. at 1751.
 15 U.S.C. § 1052(a).
 Tam, 137 S. Ct. at 1751 (“‘Slants’ is a derogatory term for persons of Asian descent . . . .”).
 Id. at 1754.
 Id. at 1753 (quoting Trademark Manual of Examining Procedure § 1203.03(b)(i) (Apr. 2017), p. 1200–150, http://tmep.uspto.gov).
 Id. at 1754.
 Id. (citing In re Tam, 808 F.3d 1321, 1334 (Fed. Cir. 2015)).
 Id. at 1755.
 Id. at 1757.
 Id. at 1758 (internal citations omitted).
 Tam, 137 S. Ct. at 1760.
 Id. (citing Walker v. Tex. Div., Sons of Confederate Veterans, Inc., 135 S. Ct. 2239 (2015); Pleasant Grove City, Utah v. Summum, 555 U.S. 460 (2009); Johanns v. Livestock Mktg. Ass’n, 544 U.S. 550 (2005)).
 Id. at 1761 (citing 524 U.S. 569 (1998); 500 U.S. 173 (1991)).
 Id. (citing 37 C.F.R. § 2.6(a)(1) (2017)); Trademark Initial Application Forms, United States Pat. & Trademark Off., https://www.uspto.gov/trademarks-application-process/filing-online/initial-application-forms (last visited Sept. 3, 2019).
 Tam, 137 S. Ct. at 1761 (noting that trademarks are “not the only government registration scheme”).
 Id. at 1763 (quoting Street v. New York, 394 U.S. 576, 592 (1969)) (internal quotation marks omitted).
 Id. at 1764 (quoting 447 U.S. 557, 564-65 (1980)) (internal quotation marks omitted).
 Id. at 1765 (internal quotation marks omitted).
 Iancu v. Brunetti, 139, S. Ct. 2294, 2297 (2019) (noting that the brand is not pronounced like the past participle of a popular expletive but is said one letter at a time: F-U-C-T); Ariane de Vogue & Kaye Sullivan, Supreme Court Says Law Banning Registration of “Scandalous” Trademarks Violates First Amendment, CNN (June 24, 2019, 11:46 AM), https://www.cnn.com/2019/06/24/politics/supreme-court-fuct-first-amendment/index.html (noting that FUCT stands for “Friends U Can’t Trust”).
 Brunetti, 139 S. Ct. at 2298.
 Id.; Matal v. Tam, 137 S. Ct. 1744, 1765 (2017).
 See Brunetti, 139 S. Ct. at 2299 (“If the ‘immoral or scandalous’ bar similarly discriminates on the basis of viewpoint, it must also collide with our First Amendment doctrine.”).
 Id. at 2299-2300.
 Id. at 2300.
 Id. at 2302.
 Id. at 2202-03 (Alito, J., concurring).
 Id. at 2303-04 (Roberts, C.J., concurring in part, dissenting in part).
 Id. at 2308 (Breyer, J., concurring in part, dissenting in part).
 Id. at 2318 (Sotomayor, J., concurring in part, dissenting in part).
 See TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001) (noting that trademarks cannot be functional); Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d. Cir 1976) (noting that trademarks must be distinctive).