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Prof. Cindy Dahl comments on SCOTUS decision in trademark case

June 27, 2019

University of Pennsylvania Law School Practice Professor of Law Cindy Dahl comments on the United States Supreme Court’s decision in Iancu v. Brunetti holding that the Lanham Act’s restriction on “immoral” or “scandalous” trademarks violates the Constitution. 


“In an interesting case at the border of Intellectual Property and First Amendment law, the Supreme Court in Iancu v. Brunetti struck down a long-standing statute that had allowed the U.S. Patent and Trademark Office to refuse to issue trademark registrations to ‘immoral’ or ‘scandalous’ trademarks. On similar grounds to last year’s Matal v. Tamcase, which struck down the statute’s ban on registering ‘disparaging’ trademarks, Justice Elena Kagan wrote for the 6-3 majority that the restriction engages in impermissible ‘viewpoint discrimination’ because it allows the government to ‘distinguish[] between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them.’ She made short order of the government’s suggestion that the USPTO could enforce the statute in a viewpoint-neutral manner, stating that the statute was unambiguous in its broad reach and was not limited only to ‘lewd, sexually explicit or profane marks’ or to certain ‘modes of expression.’

Although this ruling was predictable based on the results of Tam, the aftermath of the case may be notable for at least two reasons. First, the ruling clearly messages the need for additional legislative action. Through the majority opinion and also the opinions of the Justices who concurred (Alito) and who dissented in part (Sotomayor, Breyer, and Roberts), the court signaled that a more narrowly-drafted statute tailored to restrict registration of specifically lewd or sexually explicit terms might be upheld under the First Amendment. In Justice Alito’s words, ‘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.’ Second, the ruling might, as Justice Sotomayor states in her opinion, open the floodgates to applications for trademarks that earlier this week might have been refused registration as being ‘immoral’ and ‘scandalous.’ However, the ruling’s effect on the number of actual trademark registrations – as opposed to applications - may be minimal. Many applications may not cover bona fide trademark use, since a trademark does not just protect the use of a term, but must brand a product or service in commerce. And since the trademarks employ controversial language, even if they are legitimately being used as trademarks, they might offend a sizeable enough percentage of consumers that they are not a good marketing choice. Ultimately although this case is very interesting from a free speech point of view, the effect on trademark law practice may be minor.”