Iancu v. Brunetti

139 S.Ct. 2294 (2019)

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Nature of the Case

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Facts

Brunetti (P) is an artist and entrepreneur who founded a clothing line that uses the trademark FUCT. The mark (which functions as the clothing’s brand name) is pronounced as four letters, one after the other: F-U-C-T. Of course, when the letters are taken together they are very close to 'fuck' a well-known word of profanity. Under the Lanham Act, the PTO administers a federal registration system for trademarks. Registration of a mark is not mandatory. The owner of an unregistered mark may still use it in commerce and enforce it against infringers. Registration gives trademark owners valuable benefits. For example, registration constitutes “prima facie evidence” of the mark’s validity. And registration serves as “constructive notice of the registrant’s claim of ownership,” which forecloses some defenses in infringement actions. A trademark is eligible for registration, and receipt of such benefits, if it is “used in commerce.” The PTO cannot register a mark that “so resembles” another mark as to create a likelihood of confusion. It cannot register a mark that is “merely descriptive” of the goods on which it is used. It cannot register a mark containing the flag or insignia of any nation or State. The Lanham Act prohibits registration of marks that consist of or comprise immoral or scandalous matter. The PTO asks whether a “substantial composite of the general public” would find the mark “shocking to the sense of truth, decency, or propriety”; “giving offense to the conscience or moral feelings”; “calling out for condemnation”; “disgraceful”; “offensive”; “disreputable”; or “vulgar.” The PTO decided that P’s mark was vulgar and unregistrable. The Appeals Board stated that the mark was “highly offensive” and “vulgar,” and that it had “decidedly negative sexual connotations.” The Board thought, the mark communicated “misogyny, depravity, and violence.” P brought a facial challenge to the “immoral or scandalous” bar in the Court of Appeals for the Federal Circuit. That court found the prohibition to violate the First Amendment. Iancu (D) appealed and the Supreme Court granted certiorari.