In 1946, Congress passed the Lanham Act,1 which regulates the registration of trademarks and contains provisions limiting certain marks from being federally registrable.2 In 2017, the Supreme Court held in Matal v. Tam3 that one such provision barring “disparaging” trademarks comprised unconstitutional viewpoint discrimination in violation of the First Amendment.4 The Court was clear that this finding was fatal5: the Court often disposes of cases with little to no analysis after a finding of viewpoint discrimination, the most egregious subset of content discrimination.6 However, the Court did not answer whether trademarks are commercial speech or whether they may fall into a category such as a government program or limited public forum.7 Last Term, in Iancu v. Brunetti,8 the Supreme Court struck down a similar provision of the Lanham Act barring “immoral or scandalous” marks as facially invalid,9 narrowly holding that the provision also comprised viewpoint discrimination.10 Iancu sidestepped a speech-categories analysis by failing to engage with the reasoning of the lower court. As a result, the proper statutory approach to trademark restrictions remains unclear.
This case arose after Erik Brunetti founded his clothing brand, “FUCT,” in 1990, and attempted to register the trademark with the United States Patent and Trademark Office in 2011.11 The examining attorney found that Brunetti’s mark constituted “immoral or scandalous matter,”12 which section 1052(a) of the Lanham Act (section 2(a)) specifically forbids.13 He thus “refused to register the mark.”14 Brunetti appealed the decision, and the Trademark Trial and Appeal Board affirmed.15 The Board highlighted that dictionary definitions characterized the word “fuck” as “offensive” and “vulgar.”16 As such, the Board found “FUCT” to fall under the “immoral or scandalous” bar of the Lanham Act, rendering the mark unregistrable.17
Brunetti appealed to the Federal Circuit, which reversed the Board’s decision.18 Writing for the court, Judge Moore19 conceded that the mark was “[v]ulgar and [t]herefore [s]candalous.”20 Yet she found that the statutory bar on immoral or scandalous marks itself discriminated on the basis of content in violation of the First Amendment.21 Judge Moore set aside the question of viewpoint discrimination22 to address two of the government’s main arguments23: (1) that trademark registration constitutes either a government subsidy program or a limited public forum and is thus subject to a “less exacting degree of scrutiny”;24 and (2) that trademarks are purely commercial speech subject to only an intermediate level of scrutiny.25 Judge Moore rejected the government’s characterization of trademark registration26 and held that because section 2(a) targeted the expressive content of speech, strict scrutiny applied.27 She further noted that section 2(a)’s “immoral or scandalous” bar would fail even under the intermediate scrutiny dictated by Central Hudson Gas & Electric Corp. v. Public Service Commission of New York.28
The Supreme Court affirmed the judgment.29 Writing for the Court, Justice Kagan30 ignored the appellate court’s reasoning and found that the bar amounted to viewpoint discrimination.31 She began her analysis by invoking the Court’s precedent, noting that “if a trademark registration bar is viewpoint-based, it is unconstitutional.”32 In deciding whether the “immoral or scandalous” provision constituted such viewpoint discrimination, Justice Kagan first turned to the dictionary definition of the words.33 She found that “the Lanham Act permit[ted] registration of marks that champion[ed] society’s sense of rectitude and morality, but not marks that denigrate[d] those concepts.”34 Similarly, it “allow[ed] registration of marks when their messages accord[ed] with, but not when their messages def[ied] society’s sense of decency or propriety.”35 Justice Kagan concluded that these two “overlapping terms” made for a statute that “on its face, distinguishe[d] between two opposed sets of ideas,” resulting in “facial viewpoint bias” and “viewpoint-discriminatory application.”36 Justice Kagan proceeded to illustrate how the statute had been applied in a viewpoint-discriminatory manner — for example, the Patent and Trademark Office had denied marks promoting drug use but had approved marks promoting sobriety.37
Justice Kagan rejected the government’s argument that the Court should have applied a limiting construction to render the provision constitutional.38 She noted the avoidance canon “applies only when ambiguity exists.”39 It forbids effectively rewriting a statute, which is what the Court would have had to do.40 Justice Kagan likewise rejected the government’s “overbreadth doctrine” argument that the bar’s “unconstitutional applications [were] not substantial relative to the statute’s plainly legitimate sweep.”41 She highlighted the doctrine’s inapplicability to viewpoint-discrimination cases and noted that the provision was “substantially overbroad”: “There are a great many immoral and scandalous ideas in the world,” and the provision “cover[ed] them all.”42
Justice Alito concurred.43 He agreed that the “immoral or scandalous” bar was viewpoint discrimination, which he characterized as “poison to a free society.”44 But he noted the possibility for Congress to “adopt[] a more carefully focused statute that [would preclude] the registration of marks containing vulgar terms that play no real part in the expression of ideas.”45 He further opined that “FUCT” could “be denied registration under such a statute.”46
Chief Justice Roberts concurred in part and dissented in part.47 First, he agreed with the majority that the use of the word “immoral” in the provision was not susceptible to a narrowing construction and was thus viewpoint discriminatory.48 However, he stated that the “scandalous” portion of the provision could “be read more narrowly to bar only marks that offend because of their mode of expression.”49 The Court could have read the provision as barring “marks that are obscene, vulgar, or profane” on their own, not because of ideas they express.50 He explained that construing “scandalous” in this way could not “offend the First Amendment” because registrants could still use their marks in commerce; the government would simply not extend them the benefits accompanying registration.51 He further clarified that the government has an interest in “not associating itself” with scandalous trademarks.52
Justice Breyer concurred in part and dissented in part.53 He cautioned that the Court’s “precedents warn . . . against interpreting statutes in ways that would likely render them unconstitutional.”54 The Court could have read the “scandalous” portion of the provision in a way that would render it constitutional.55 In reaching this conclusion, Justice Breyer explained that the Court should treat the categories of speech in its First Amendment jurisprudence not as “outcome-determinative rules, but instead as rules of thumb.”56 Rather than “rigidly” adhering to these speech categories, he would have applied a “proportionality analysis.”57 Such an analysis appeals to the underlying values of the First Amendment by weighing the harm a provision poses to free speech values against the government interests and objectives underlying the provision.58 Applying his balancing test, Justice Breyer would have found in favor of upholding the “scandalous” portion of the bar.59 Unlike Chief Justice Roberts, Justice Breyer would have avoided a categories analysis entirely and upheld this portion of the provision under his balancing approach,60 especially considering the government’s interest in protecting society and the “sensibilities of children.”61
Justice Sotomayor concurred in part and dissented in part.62 She warned that the decision would “beget unfortunate results,” because the government would no longer have a “statutory basis to refuse . . . registering the most vulgar, profane, or obscene words and images imaginable.”63 Rather than reach such a result, she would have applied a “narrowing construction to the term ‘scandalous’ and accordingly reject[ed] . . . Brunetti’s facial challenge” to that portion of the provision.64 Justice Sotomayor agreed with the majority that the Court could not read “immoral” in a way that would render that portion of the provision constitutional.65 But she argued that “scandalous” offered more ambiguity and latitude for applying the avoidance canon than the majority recognized.66 A narrow interpretation of “scandalous,” was reasonable if one looked at this word in context, reading the other words in the statute as “constrain[ing] its scope.”67 Reading “scandalous” and “immoral” together “collapse[d]” the two,68 making one essentially superfluous, which was not Congress’s intent.69 Instead, the Court should have treated them “as each holding a distinct, nonredundant meaning, with ‘immoral’ covering marks that are offensive because they transgress social norms, and ‘scandalous’ covering marks that are offensive because of the mode in which they are expressed.”70 Justice Sotomayor went on to defend her limiting construction as “both appropriate . . . and consistent with past precedent.”71 Finally, she argued that interpreting the “scandalous” portion of the provision as a bar on shocking or offensive modes of expression would be constitutionally permissible as a “reasonable, viewpoint-neutral, content-based regulation.”72 Trademark registration, she argued, is tantamount to either a limited public forum or government subsidy, both of which allow such reasonable content-based regulation.73 Justice Sotomayor’s opinion therefore differed from Justice Breyer’s in that she would still have tried to situate trademark within the larger jurisprudence of speech categories.74 Even further, Justice Sotomayor was willing to opine on where trademark may fall among these categories, unlike Chief Justice Roberts.75
The majority, however, failed to clarify where trademark registration falls within traditional First Amendment speech categories, leaving the Lanham Act’s future unclear. The Lanham Act narrowly defines trademarks as speech serving a source-identification function in the marketplace. Given this definition the Lanham Act inevitably contains content-based distinctions. As the lower court invalidated the “immoral or scandalous” bar for being content based, it was crucial that the Court engage with this reasoning and categorize trademark within First Amendment jurisprudence. Doing so may have settled that trademark can qualify as a limited public forum or a government program, which would allow reasonable content-based distinctions. Yet, by ignoring this important issue, the Court left the future of trademark regulation unclear and the Lanham Act potentially inoperative.
Trademarks as speech are limited to their source-identification function. While trademarks may communicate different things, “the only thing the government protects as a trademark is the communication ‘this symbol stands for a particular producer.’”76 The Lanham Act encapsulates this purpose by narrowly defining “trademark” as a mark used “to identify and distinguish [one’s] goods . . . from those manufactured or sold by others and to indicate the [goods’] source.”77 Tied to this definition, trademark law performs the important function of reducing transaction costs associated with “shopping and making purchasing decisions.”78 The government therefore “has a role to play in creating a scheme whereby consumers can benefit from trademarks in the marketplace.”79 Trademark bars thus ensure that trademarks perform this limited source-identifying function.80
In light of a trademark’s function, content-based distinctions are necessary to preserve the trademark system’s efficiency.81 Registration “is inherently about the content of the registrant’s mark”82 because such content “is important to figuring out if a symbol is capable of being a trademark.”83 For example, “APPLE lacks trademark significance when applied to the fruit instead of computers,” and therefore would not serve as the “empty vessel[] that trademark law idealizes” in ensuring trademarks evoke only a source-identification message.84 Such a distinction is impossible without reference to content. The Supreme Court has defined content-based regulations as those targeting speech based on “the topic discussed or the idea or message expressed.”85 Viewed through this lens, section 2 of the Lanham Act is “almost nothing but content-based.”86
Given the focus on trademark registration as a content-based regulation in the lower court opinion, and the ambiguity surrounding trademark’s place among the First Amendment speech categories after Tam, the Brunetti Court should have provided guidance on the best approach. The lower court invalidated the “immoral or scandalous” bar because it was content based while declining to situate trademark in a speech category that would have forgiven such content discrimination.87 If trademark registration were a government program or limited public forum, then the reality that registration is content based would not be dispositive.88 If it did not fit in either of those categories, then strict scrutiny or Central Hudson scrutiny would apply.89 Either level of scrutiny would likely lead to the invalidation of much of the Lanham Act.90
There are compelling arguments for trademark registration to fall under a limited public forum or a government program framework, or to qualify as commercial speech. While some Justices were open to the idea of placing trademark registration under either framework in Brunetti, none could quite decide where trademark registration belongs.91 The Court could analyze trademark registration under the government program framework as a reasonable limitation on such a program.92 As Chief Justice Roberts, Justice Breyer, and Justice Sotomayor explained, trademark bars simply deny registrants the benefits accompanying federal trademark registration without restricting registrants from otherwise using the marks.93 The Court could also treat trademark registration as a limited or nonpublic forum.94 Justice Sotomayor briefly laid out how this analysis might look in analogizing to Cornelius v. NAACP Legal Defense & Educational Fund, Inc.95 at oral argument.96 There, the Court held that a federal fund drive, to which a limited set of organizations were invited to participate, was “a nonpublic forum.”97 If classified under either category, trademark regulation would probably be safe from First Amendment challenges so long as it was reasonable and viewpoint neutral.98 Finally, the Court could view trademark regulation as regulating commercial speech.99 Classifying trademark as such would possibly protect provisions of the Lanham Act dealing with deception.100 Yet it probably would not help protect other provisions as Central Hudson scrutiny is beginning to look more like strict scrutiny.101
By avoiding such analyses entirely, the Court left the future of the Lanham Act in peril. Such a conclusion was acknowledged at oral argument.102 Almost all of the trademark registration bars are content based. Many if not most of the provisions seem to fail strict scrutiny. It is hard to determine what the substantial government interest would be.103 Further, a less restrictive alternative exists in the government’s ability to “make an individualized determination rather than to deter all uses of marks within a class.”104 Even if not subject to strict scrutiny, many provisions would still probably fail under Central Hudson scrutiny where provisions “more extensive than . . . necessary to serve [a government] interest” would be suspect.105 “More extensive than necessary” does not seem to leave much more room than its “least restrictive alternative” strict scrutiny cousin.106 Thus, only purely deceptive speech would probably be safe to regulate under Central Hudson.107
Given this outcome-determinative nature of strict or Central Hudson scrutiny, coupled with the fact that trademark registration is inherently content based, a speech-categories analysis was crucial in Brunetti. As the government explained at oral argument, striking down the “immoral or scandalous” bar of the Lanham Act leaves the government without the opportunity to “restrict trademarks on the ground that they’re obscene.”108 If other provisions are invalidated due to their content-based nature, there will be little left for the government to use as a basis for restricting trademarks. This would essentially render the Lanham Act substantially inoperative and trademark regulation ineffective. Brunetti thus leaves Congress and future litigants with no clear path forward.