Respondent Erik Brunetti sought federal registration of the trademark FUCT. The Patent and Trademark Office (PTO) denied his application under a provision of federal law that prohibits registration of trademarks that “[c]onsist[ ] of or comprise[ ] immoral[ ] or scandalous matter,” 15 U.S.C. §1052(a). Brunetti brought a First Amendment challenge to the “immoral or scandalous” bar.
Our amicus brief to the Supreme Court supported his view, which is that the government can’t use its intellectual property registration system to disfavor certain ideas. (We took the same position, and were also successful, two years ago in Matal v. Tam [link here], the case about the band “The Slants,” and the prohibition on “disparaging” trademarks.)
In June 2019, the Court held, consistent with our position, that the “immoral or scandalous” bar similarly discriminates on the basis of viewpoint. It permits registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety. This viewpoint bias in the law results in viewpoint-discriminatory application. 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. Choosing favored viewpoints is impermissible under the First Amendment.