In a case that could indicate the U.S. Supreme Court’s take on contemporary public attitudes toward the use of profane language and lewd images as trademarks, and have wider implications on the authority of the government to regulate and restrict profanity in other contexts, the court is set to decide whether a century-old provision of the U.S. trademark law, which authorizes the U.S. Patent and Trademark Office (USPTO) to reject registration of a trademark it considers to be “immoral” and “scandalous,” passes constitutional muster under the First Amendment.
The “scandalous clause” contained in section 2(a) of the U.S. Trademark Act instructs the USPTO to reject applications for registration of any mark that “consists of or comprises immoral, deceptive, or scandalous matter; or 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.” Invoking this clause, the USPTO rejected an application by Erik Brunetti for the mark FUCT for use in connection with a clothing line. The Trademark Trial and Appeal Board (TTAB) affirmed the examiner’s rejection.
Brunetti appealed the TTAB rejection to the Federal Circuit Court of Appeals. While the appeal was pending, the U.S. Supreme Court issued a landmark ruling in Matal v. Tam, which invalidated the disparagement provision of section 2(a) for being in conflict with the First Amendment’s right of free speech. Relying on Tam and expanding its holding, the Federal Circuit struck down the scandalous clause of section 2(a) as similarly failing the constitutional test of the First Amendment.
The USPTO filed a writ of certiorari to the U.S. Supreme Court requesting review of the Federal Circuit’s Brunetti decision, which the Supreme Court granted. Now the issue for the Supreme Court in Brunetti is whether the analysis and reasoning it applied in Tam to reject the disparagement clause of section 2(a) will result in invalidation of the section’s scandalous clause as well.
Eight of the Supreme Court’s regular nine justices participated in the Tam decision. The justices were unanimous in concluding that the disparagement clause of section 2(a) was unconstitutional, but split on their analysis and approach to the issue, resulting in two plurality opinions penned by justices Alito and Kennedy, each of which was signed by four justices. Both plurality opinions rejected the USPTO’s argument that registering a trademark is a form of government speech and that, under the long-standing Supreme Court precedent, the government is permitted to communicate its own viewpoints without violating the First Amendment. The two plurality opinions also agreed that applying the disparagement clause requires the USPTO to engage in impermissible viewpoint discrimination. The opinions split, however, as to the other arguments put forth by the USPTO urging the court to uphold the disparagement clause. The Alito plurality rejected the government’s argument that allowing a trademark to register is analogous to providing a government subsidy and that the government need not subsidize programs it prefers not to encourage. Finally, Justice Alito’s plurality opinion analyzed the disparagement clause as a form of commercial speech and concluded it could not even pass muster under the more relaxed review standard applied to such speech.
On the other hand, the plurality Tam opinion issued by Justice Kennedy focused its analysis and reached its conclusion based on its application of a viewpoint discrimination test, which it articulated as inquiring into “whether—within the relevant subject category—the government has singled out a subset of messages for disfavor based on the view.” The Kennedy plurality found that in exercising its authority under the disparagement clause, the USPTO necessarily engaged in impermissible viewpoint discrimination sufficient to make it constitutionally untenable. Having reached its conclusion based on viewpoint discrimination, the Kennedy plurality found it unnecessary to address the other government arguments, which the Alito plurality opinion had considered and rejected.
Because both Justice Kennedy and Justice Alito’s plurality opinions converged in their rejections on the viewpoint discrimination effect of the disparagement clause, the Supreme Court is expected to apply that ground and its accompanying reasoning and analysis to the scandalous clause at issue in Brunetti. Thus, the key inquiry in Brunetti may well be whether the USPTO’s exercise of its authority under the scandalous clause amounts to discrimination based on viewpoint. If so, then the clause will follow the fate of its disparaging counterpart and fall. If not, then the scandalous clause is likely to survive constitutional First Amendment scrutiny.
The USPTO regularly applies the scandalous clause provision of section 2(a) to reject marks that contain profane language or graphic sexual images—features that were not at issue in Tam. The application of the scandalous clause thus involves evaluation and judgment by the USPTO as to content of the trademark and not any viewpoint it may convey. It has long been settled that the First Amendment permits governments at the federal, state, and local levels to regulate graphic sexual images and profane language on government-run public forums, such as city buses. Relevant to First Amendment analysis of the USPTO’s trademark registration authority is that although a section 2(a) rejection denies registration of the mark with the USPTO, it does not preclude use of the mark in trade and commerce, given that under U.S. trademark laws the underlying rights in a trademark are obtained not by registration of the mark but by use of the mark to identify goods and services in trade and commerce. An owner of an unregistered mark would still have legal “common law” rights in the mark, which rights can be enforced in courts. Therefore, trademark registration is not a requirement for possession of a legally valid and enforceable trademark.
The Supreme Court may well reverse the Federal Circuit’s Brunetti decision and restore the USPTO’s authority to reject trademarks under the scandalous clause of section 2(a), albeit perhaps on a narrower scale. Under either of Tam’s plurality opinions addressing viewpoint discrimination, the scandalous marks provision survives First Amendment scrutiny because the USPTO practice in this regard is content-based and viewpoint-neutral. A fair reading of Tam makes clear that the Supreme Court did not aim to grant First Amendment protection to words, phrases, and imagery that the general public accepts as profane and lewd, and that government restrictions on such is permitted so long as the restriction policy and practice is based on content and does not advocate or discriminate on the basis of particular viewpoint. In fact, even Justice Alito’s plurality opinion specifically recognizes that trademark registration is “more analogous” to “cases in which a unit of government creates a limited public forum for private speech,” wherein “some content-based restrictions are permitted.”
Those “more analogous” cases have repeatedly upheld content-based restrictions on speech in limited public forums created by the government. For example, the Second Circuit Court of Appeals has upheld a Department of Motor Vehicle policy banning use of profane and lewd language on license plates, finding no First Amendment right to use the SHTHPNS license plate. Governmental bans on the use of nude or sexually explicit imagery in clubs have similarly been held to be viewpoint-neutral. In that regard, the Supreme Court has held that “being in a state of nudity is not an inherently expressive condition.” In another case, the Supreme Court held that the First Amendment did not prevent a school district from restricting the use of an offensive form of expression in a public school debate forum. The decision went on to explain that “nothing in the Constitution prohibits the states from insisting that certain modes of expression are inappropriate and subject to sanctions.”
A compromise approach, suggested by Judge Dyk in his concurring opinion in the Federal Circuit’s Brunetti decision invalidating the scandalous provision of section 2(a), is to adopt a narrower reading of the scandalous provision to limit its application to obscene marks. In that regard, Judge Dyk noted that under the Supreme Court’s time-tested “saving construction” precedents, where possible, courts must construe federal statutes to “avoid serious doubt of their constitutionality.” Moreover, certainty in curing an identified defect is not required for a court to engage in a saving construction. Rather, curing the constitutional defect need only be “fairly possible,” and “every reasonable construction must be resorted to.” Judge Dyk’s concurring opinion suggested limiting the reach of the scandalous clause to “obscene marks, which are not protected by the First Amendment.”
 15 U.S.C. § 1052(a).
 In re Brunetti, No. 85310960, 2014 WL 3976439 (Aug. 1, 2014).
 Matal v. Tam, 137 S. Ct. 1744 (2017).
 Iancu v. Brunetti, No. 18-302, 2019 WL 98541 (U.S. Jan. 4, 2019).
 Tam, 137 S. Ct. at 1750.
 Id. at 1753.
 Id. at 1744.
 Perry v. McDonald, 280 F.3d 159, 170 (2d Cir. 2001).
 City of Erie v. Pap’s A.M., 529 U.S. 277, 289 (2000).
 Bethel Sch. Dist. No. 403 v. Fraser, 478 U.S. 675, 685 (1986).
 In re Brunetti, 877 F.3d at 1358.