Is the Ruling by the Supreme Court in Iancu v. Brunetti “FUCT” Up?

In 1990, Erik Brunetti (Brunetti) started the street-wear brand FUCT, pronounced as a spelled-out word F-U-C-T (an acronym for “Friends U (you) Can’t Trust,” according to Brunetti). Since 1993, Brunetti has filed variations of the mark for federal trademark registration, including an application in 2011 for the mark “FUCT.” The 2011 application was denied by the United States Patent and Trademark Office (USPTO) on the basis of Section 2(a) of the Lanham Act (codified as 15 U.S.C. § 1052(a)) for being directed to “immoral” or “scandalous” matter, terms treated as the same by the USPTO following case law[1], as the USPTO believed a substantial portion of the general public would find “FUCT” vulgar.[2] Brunetti appealed the denial of the mark to the Trademark Trial and Appeal Board (TTAB), which upheld the denial. Brunetti again appealed the denial of the mark to the Court of Appeals for the Federal Circuit (Federal Circuit), which found that the clause of § 2(a) used to deny the application for “FUCT” was in violation of the First Amendment, being an unconstitutional restriction of free speech. Following a petition from the USPTO, the Supreme Court of the United States (SCOTUS) granted certiorari and heard oral arguments on April 15, 2019 for Iancu v. Brunetti, No. 18-302 (U.S. Jun. 24, 2019) (Brunetti).

“FUCT” and “fcuk”

Before discussing the holding in Brunetti, it is worth noting that although “FUCT” ran afoul of § 2(a) of the Lanham Act, other seemingly-similar marks have been granted by the USPTO including, but not limited to, “fcuk” and “FVCK.” In the case of “fcuk” (a play on French Connection UK), the clothing company French Connection applied for and was granted multiple registrations for variations of the mark “fcuk” between 1993 (Brunetti’s first filing) and 2019 (the holding of Brunetti). The registrations of “fcuk” and “FVCK” were presented by John R. Sommer (appearing for Brunetti) during oral arguments of Brunetti as examples of the inconsistent application of § 2(a) of the Lanham Act,[3] along with the question whether § 2(a) of the Lanham Act was overbroad in its construction for being viewpoint-based (as held by the Federal Circuit).[4]

Matal v. Tam

In addition, it is worth noting that Brunetti is not the first time SCOTUS has reviewed the Lanham Act to determine whether a clause violates the freedom of speech guaranteed by the First Amendment. In 2017, SCOTUS held in Matal v. Tam, 137 S. Ct. 1744 (2017)[5] (Tam) that a clause of § 2(a) of the Lanham Act prohibiting registration of a trademark that “[c]onsists of or comprises […] matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” was in violation of the First Amendment, with an 8-0 vote. In the Tam decision, it was determined that “[s]peech may not be banned on the ground that it expresses ideas that offend,”[6] as “‘the First Amendment forbids the government to regulate speech in ways that favor some viewpoints or ideas at the expense of others.’”[7] More about Tam may be found in our articles Supreme Court to Review “Disparaging” Trademarks, Supreme Court Hears Oral Arguments in Disparaging Trademark Case, and Supreme Court Makes Decision on Disparaging Trademarks. Please also see our article Redskins Trademark Dispute Ended after Supreme Court Ruling for a discussion about the continued fight for the Washington Redskins trademarks, and our article Use it or Lose it: The Cleveland Indians and Chief Wahoo for a discussion about the discontinuation of the use of the Chief Wahoo logo by the Cleveland Indians.

A Violation of the First Amendment?

Returning to the Brunetti decision, on June 24, 2019, SCOTUS held the clause of § 2(a) of the Lanham Act prohibiting registration of a trademark that “[c]onsists of or comprises immoral […] or scandalous matter” to be in violation of the First Amendment, with a 6-3 vote. In the opinion delivered for the majority, Justice Kagan stated that “the Lanham Act allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety,” such that “the statute, on its face, distinguishes between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them.”[8] In addition, Justice Kagan stated that “if a trademark registration is viewpoint-based, it is unconstitutional,”[9] as “a law disfavoring ‘ideas that offend’ discriminates based on viewpoint, in violation of the First Amendment.”[10] Further, Justice Kagan stated that “the ‘immoral or scandalous bar’ is substantially overbroad. There are a great many immoral and scandalous ideas in the world (even more than there are swearwords), and the Lanham Act covers them all. It therefore violates the First Amendment.”[11] In this regard, the majority opinion substantially aligned with the Tam decision about “disparaging” marks.

The determining of unconstitutionality in Brunetti, however, was not a requirement that the Lanham Act prohibition of “immoral” or “scandalous” material be removed entirely. Rather, the majority opinion, as well as select concurring opinions and concurring/dissenting opinions, indicated that the decision in Brunetti does not preclude Congress from enacting a statute adopting a narrower approach. According to the Justice Kagan for the majority, “reinterpretation […] mostly restrict[ing] the PTO to refusing marks that are ‘vulgar’-meaning ‘lewd,’ ‘sexually explicit or profane’ [which] would not turn on viewpoint, and so we could uphold it.”[12] In addition, according to Chief Justice Roberts, “standing alone, the term ‘scandalous’ need not be understood to reach marks that offend because of the ideas they convey; it can be read more narrowly to bar only marks that offend because of their mode of expression—marks that are obscene, vulgar, or profane.”[13] Further, according to Justice Alito, the “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.”[14]

From a personal perspective, it appears the Justices are commenting on the possibility of limiting the interpretation to categories of speech not protected by the First Amendment (e.g., obscenity, fighting words, or the like)). In addition, it appears the Justices are commenting on the possible incorrectness of past case law which considered “immoral” and “scandalous” to be in the same category, which may (at least in part) have resulted in the determined overreach of the clause of § 2(a) of the Lanham Act.

Is the Holding of Iancu v. Brunetti “FUCT” up, then?

As suggested by Justice Sotomayor, there is perhaps merit in the concern that “[t]he Court’s decision […] will beget unfortunate results”[15] by giving “the Government […] no statutory basis to refuse (and thus no choice but to begin) registering marks containing the most vulgar, profane, or obscene words and images imaginable”[16] and by  “permit[ting] a rush to register trademarks for even the most viscerally offensive words and images that one can imagine.”[17] And while “immoral” does appear to be a more nebulous, over-reaching term, “scandalous” may be possible of a narrower interpretation that serves the field of trademark law, one mission of which is to “hel[p] consumers identify goods and services that they wish to purchase, as well as those they want to avoid.”[18]

However, the holding is consistent with the ruling in Tam. In addition, the holding does not run afoul of fashioning a new statute (a power given to Congress) while attempting to interpret the current 15 U.S.C. § 1052(a) by dissecting the clause to remove “immoral” and leave “scandalous” in a narrower form.[19] To this point, the various opinions of Brunetti do suggest that Congress could review this particular clause of § 2(a) of the Lanham Act to determine a narrower interpretation of “immoral” and/or “scandalous” that does not run the possibility of being a viewpoint-based discrimination in conflict with the First Amendment. In this regard, the ruling in Brunetti does ultimately appear to be correct.

In any event, with there now being multiple recent holdings finding against different clauses of § 2(a) of the Lanham Act, the next step may need to come from Congress to consider revising clauses of the Lanham Act which may violate the Constitution and its Amendments. Until a “more carefully focused statute”[20] is passed by Congress, however, decisions such as Brunetti (and Tam) should provide support for the registration of other marks rejected under the guise of “immoral,” “scandalous,” and/or “disparaging.”

Suiter Swantz IP is a full-service intellectual property law firm providing client-centric patenttrademark, and copyright services. If you need assistance with an intellectual property matter and would like to speak with one of our attorneys, please contact us at

Jon S. Horneber is a patent attorney with Suiter Swantz IP. Jon holds a B.S. and M.S. in Mechanical Engineering from the University of Colorado Boulder. Jon received his Juris Doctor from the University of Nebraska College of Law.

Jon joined the Firm as a Law Clerk in 2014. After his 2016 graduation, Jon began working as a patent attorney for the Firm. As a Patent Attorney, Jon prepares and prosecutes U.S. and foreign patent applications.

Jon is admitted to the Nebraska and Colorado Supreme Courts and the U.S. District Court, Districts of Nebraska and Colorado. He is also registered to practice before the United States Patent and Trademark Office.

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[1] Trademark Manual of Examining Procedure (TMEP) §§ 1203, 1203.01 (Although the words “immoral” and “scandalous” may have somewhat different connotations, case law has included immoral matter in the same category as scandalous matter. See In re McGinley, 660 F.2d 481, 484 n.6, 211 USPQ 668, 673 n.6 (C.C.P.A. 1981), aff’g 206 USPQ 753 (TTAB 1979) (“Because of our holding, infra, that appellant’s mark is ‘scandalous,’ it is unnecessary to consider whether appellant’s mark is ‘immoral.’ We note the dearth of reported trademark decisions in which the term ‘immoral’ has been directly applied.”)).

[2] Id. (The determination of whether a mark is scandalous must be made in the context of the relevant marketplace for the goods or services identified in the application, and must be ascertained from the standpoint of not necessarily a majority, but a “substantial composite of the general public.” As long as a substantial composite of the general public would perceive the mark, in context, to have a vulgar meaning, “the mark as a whole ‘consists of or comprises . . . scandalous matter’” under §2(a). In re Fox, 702 F.3d 633, 638, 105 USPQ2d 1247, 1250 (quoting 15 U.S.C. §1052(a) (emphasis added); In re Boulevard Entm’t, Inc., 334 F.3d 1336, 1340, 67 USPQ2d 1475, 1477 (Fed. Cir. 2003); In re McGinley, 660 F.2d 481, 485, 211 USPQ 668, 673.).

[3] See Brunetti, oral arguments at 35-36.

[4] Id. at 32-33, 38-39.

[5] See Matal v. Tam was originally Lee v. Tam. Matal v. Tam is also 582 U.S. __ (U.S. Jun. 19, 2017).

[6] Id. at 1751.

[7] Id. at 1757 (citing to Lamb’s Chapel v. Center Moriches Union Free School Dist., 508 U.S. 384, 394, 113 S.Ct. 2141, 124 L.Ed.2d 352 (1993)).

[8] See Brunetti, slip op., at 6.

[9] Id.  at 4 (citing to Matal v. Tam, 582 U. S., at ___–___, ___–___ (opinion of ALITO, J.) (slip op., at 1–2, 22–23); id., at ___–___, ___ (opinion of Kennedy, J.) (slip op., at 1–2, 5)).

[10] Id. at 8. (citing to 582 U. S., at ___ (opinion of ALITO, J.) (slip op., at 2); see id., at ___–___ (slip op., at 22–23); id., at ___–___ (opinion of Kennedy, J.) (slip op., at 2–3)).

[11] Id.  at 11.

[12] Id. at 9.

[13] See Brunetti (Roberts, C.J., concurring/dissenting op., at 2).

[14] See Brunetti (Alito, J., concurring op., at 1).

[15] See Brunetti (Sotomayor, J., concurring/dissenting op., at 1).

[16] Id.

[17] Id. at 18.

[18] See Brunetti (Breyer, J., concurring/dissenting op., at 6) (citing to Matal v. Tam, 582 U.S.__ (slip op., at 2)).

[19] See generally Brunetti, slip op., at 9.

[20] See Brunetti (Alito, J., concurring op., at 1).