Kyle Roat, Blog Editor, University of Cincinnati Law Review
Two years after striking down the “disparagement clause” of the Lanham Act, the Supreme Court has again returned to remove a bar to federal registration of trademarks. In 2017, the Court considered a challenge by the “dance-rock” band The Slants, who were denied registration of their band name under 15 U.S.C. §1052(a). Without fully resolving several underlying questions (for example, whether trademarks are “commercial speech”), all eight of the Justices deciding the case agreed that the disparagement clause was unconstitutional because it discriminated on the basis of viewpoint. The Court’s return to §1052(a) was prompted by a challenge to the provision’s restriction on “immoral” or “scandalous” marks. Part I of this article will review the opinions of the Court. Part II will argue that while the Court is correct to overturn the restriction on immoral or scandalous marks, the Court’s framework for Free Speech Clause cases misunderstands the nature of speech and unnecessarily complicates Free Speech jurisprudence.
II. The Opinions of the Court
Erik Brunetti applied for and was denied registration of the trademark FUCT for use on clothing. Despite Mr. Brunetti’s insistence that the mark should be read as its individual letters, the United States Patent and Trademark Office could not overlook the possibility it would be read as the past participle of an expletive. Both the reviewing attorney and the Patent Trial and Appeal Board denied Mr. Brunetti’s application. Mr. Brunetti then brought his facial challenge to the “immoral or scandalous” bar in the Court of Appeals for the Federal Circuit, which ruled that §1052(a) violated the First Amendment.
B. Majority Opinion
All nine justices agreed that the statute’s prohibition on “immoral” marks was an impermissible viewpoint discrimination and offensive to the First Amendment. The Court split on whether the statute was capable of a narrower construction in the case of “scandalous” marks that would allow the Court to uphold the statute. The majority opinion read the statutory prohibition as a “unitary provision,” that is, the statute bars marks that are “immoral or scandalous,” rather than severable prohibitions. The government conceded that the provision was generally read this way by the Patent and Trademark Office. In part because of this construction of the statute, the majority rejected the government’s argument that the restriction could be read as viewpoint neutral.
The government’s proposed narrower construction of the statute would prohibit marks that were offensive or shocking because of the mode of their expression, and thereby limit the restraint of speech to marks that were lewd, sexually explicit or profane. The majority declined to do so because the canon of construction that instructs courts to read statutes as constitutional applies only when the challenged statute is ambiguous. The majority found no ambiguity in this provision of the Lanham Act.
Four additional opinions were issued by the Justices. Justice Alito wrote only to emphasize that Congress could pass a more carefully crafted statute that restricted trademarks in a way that did not violate the First Amendment.
Chief Justice Roberts concurred with the majority that the prohibition on registration of “immoral” discriminated on the basis of viewpoint but disagreed that “scandalous” was not susceptible of a narrower construction, an argument presented more fully by Justice Sotomayor. The Chief Justice also suggested that refusing registration to “obscene, vulgar, or profane marks” does not punish anyone, merely denies them “certain additional benefits.”
Justice Breyer also concurred with Justice Sotomayor on a narrower reading of the statute being both permissible and constitutional, but wrote to suggest that the Court erred by dividing its speech cases into outcome-determinative categories such as “viewpoint discrimination” and “commercial speech.” Instead of rules, Justice Breyer would have the categories developed in the Court’s jurisprudence as heuristics instead of rules.
Agreeing that the majority’s reading of the statute was reasonable, Justice Sotomayor dissented in part from the majority opinion by suggesting that it was also reasonable to read the terms “immoral” and “scandalous” as separate statutory bars. Justice Sotomayor further argued that Congress must have intended the §1052(a) to be read this way, because otherwise “scandalous” adds no content to the provision. The dissent in part also suggested that the Court could apply a narrower construction to the offending term to salvage the statute because the kinds of considerations – which in other contexts, such as the rule of lenity in criminal law – weigh against interpreting statutes in favor of the government’s position are not present in trademark law.
III. Analysis & Conclusion
While the Court has reached the correct outcome in this case, it has done so for the wrong reasons. Justice Breyer comes closest to stating why the prohibition on registration of “immoral” or “scandalous” marks is unconstitutional. In applying a categorical approach to the evaluation of statutes that restrain speech, the Court unnecessarily entangles itself in a metaphysical quandary that ultimately leaves the Justices in knots as they attempt to determine whether the statute discriminates based on viewpoint, or merely content.
The very idea of viewpoint discrimination requires courts to divorce speech, in all its forms, into a false dichotomy wherein the mode of expression is segregated from the content of the expression. Nowhere else would we stand for this kind of bifurcation. Speech is the critical tool human beings use to translate their internal experience to the outer world and laws which limit that speech impair the function of a democracy.
It is just as, if not more important for the citizens of a democracy to be exposed to speech they find disagreeable than to be protected from such expressions. Barring offensive expressions from the commons does not erase them but it does permit a willful ignorance of their existence and a society which ignores the reprehensible or the vulgar cannot address the issues raised by such obscenity.
In conclusion, the
Court has come to the right outcome, even if it has the wrong answer. It is not
just “immoral” speech that is protected by the First Amendment, but
“scandalous” and “vulgar” speech. There are any number of constitutional ways
one can protect themselves from exposure to expressions they find offensive-
the force of the government just isn’t one of them.
 See Matal v. Tam, 137 S.Ct. 1744 (2017).
 15 U.S.C.A. §1052(a) (West 2019). The statute reads in relevant part, “No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—(a) Consists of or comprises . . . matter which may disparage . . . persons, living or dead, . . . or bring them into contempt, or disrepute.”
 Matal, 137 S.Ct. at 1765. See also, Iancu v. Brunetti, No. 18-302, 2019 WL 2570622 at *3 (U.S. 2019).
 15 U.S.C.A. §1052(a) (West 2019). “No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—(a) Consists of or comprises immoral . . . or scandalous matter.”
 Iancu, No. 18-302, 2019 WL 2570622, at *2 (U.S. 2019).
 Id. at *2.
 Id. at *3.
 Id. at *6.
 Id. at *5. See also Iancu, No. 18-302, 2019 WL 2570622, at *11 (Sotomayor, J. dissenting).
 Id. at *3.
 Id. at *5. “The Government’s idea, abstractly phrased, is to narrow the statutory bar to ‘marks that are offensive [or] shocking to a substantial segment of the public because of their mode of expression, independent of any views that they may express.’” (Quoting the Transcript of the Oral Argument).
 Id. at *6 Alito, J. concurring in part.
 Id. at *6 Roberts, C.J. concurring in part.
 Id. at *7.
 Id. at *7 Breyer, J. concurring in part.
 Id. at *7.
 Id. at *11. Sotomayor, J. concurring in part.
 Id. at *12.
 Id. at *14.