Trademark law intersects with First Amendment free speech rights in several key ways:
Prior Restraint and Content-Based Restrictions: When the government denies trademark registration based on the content of a mark, it potentially creates a content-based restriction on speech. While trademark registration provides valuable benefits (like presumptive validity and enhanced enforcement rights), denial doesn’t prohibit use of the mark entirely.
Commercial vs. Expressive Speech: Trademarks serve both commercial functions (identifying source) and expressive functions (conveying messages). Courts must balance the government’s interest in regulating commercial speech against First Amendment protections for expressive content.
Viewpoint Discrimination: The Supreme Court has been particularly concerned with trademark provisions that discriminate based on viewpoint rather than applying content-neutral restrictions. Provisions that allow some messages while prohibiting others based on their perspective raise heightened constitutional scrutiny.
Government Speech Doctrine: There’s ongoing debate about whether trademark registration constitutes government speech (which receives less First Amendment protection) or creates a limited public forum where stricter constitutional standards apply.
In the case Iancu v. Brunetti,1 the U.S. Supreme Court struck down the Lanham Act’s Section 2(a) prohibition on registering “immoral or scandalous” trademarks as unconstitutional under the First Amendment.
In Brunetti, petitioner Erik Brunetti sought to register the mark “FUCT” for clothing. The USPTO denied registration under Lanham Act Section 2(a). The Court held 6-3 that the “immoral or scandalous” bar violated the First Amendment‘s Free Speech Clause. Justice Kagan, writing for the majority, found that this provision discriminated based on viewpoint because it allowed registration of marks that promoted mainstream moral views while prohibiting those that challenged conventional morality.
The Court distinguished this case from Matal v. Tam,2 another First Amendment and trademark case which struck down Section 2(a)’s “disparagement” clause. Here, the government argued the provision was viewpoint-neutral, but the Court found it inherently viewpoint-discriminatory because determinations of what is “immoral” necessarily involve judgments about the message’s perspective on morality. Justice Alito concurred, suggesting Congress could potentially craft a more narrowly tailored restriction focused on genuinely vulgar or profane marks without engaging in viewpoint discrimination.
In the very recent Federal Circuit case In re Brunetti,3 is Brunetti’s second major trademark dispute. The Federal Circuit vacated a Trademark Trial and Appeal Board (TTAB) refusal to register the word FUCK as a trademark for various consumer goods and retail services. Unlike the previous Supreme Court case that involved the mark “FUCT” and constitutional challenges to the immoral clause, this case involved a different application seeking to register “FUCK” for goods including sunglasses, jewelry, backpacks, and retail services. The legal issues centered on the failure-to-function doctrine rather than First Amendment concerns.
The court rejected most of Brunetti’s constitutional challenges but concluded that TTAB failed to articulate a coherent standard for determining when widely-used words can function as source identifiers, and vacated the refusal to register. Judge Lourie dissented, arguing that substantial evidence clearly supported the Board’s conclusion that the “f-word” cannot serve as a trademark for the applied-for goods. The decision highlights ongoing tensions in trademark law regarding when common or widely-used words can function as source identifiers. The court’s emphasis on requiring consistent standards from the USPTO may have implications beyond trademark law, potentially affecting patent examination practices as well.
Doctrinally, the Brunetti cases demonstrates how trademark disputes can evolve from First Amendment challenges to the technicalities of trademark law. Constitutional arguments are high-brow whether a mark actually functions as a source identifier is getting into the weeds of trademark law doctrine.
The Federal Circuit’s critiques the USPTO’s “I know it when I see it” approach, which is an underlying policy in both ex parte examination and TTAB appellate review. The Fed Circuit demands coherent, consistent standards suggests that ad hoc determinations—even in seemingly obvious cases—are constitutionally and legally problematic.
Also, the failure-to-function doctrine may become the primary mechanism for rejecting controversial marks. This shifts focus from what marks say to whether they can actually function as trademarks. Winning the First Amendment arguments do not guarantee trademark registration success. Even after constitutional barriers fall, applicants must still satisfy fundamental trademark requirements through consistent, predictable standards.
For more information, please contact Yonaxis I.P. Law Group.