Justices Hold Scandalous Trademark Can Be Federally Registered

Wednesday, June 26, 2019

The U.S Supreme Court decided in Iancu v. Brunetti,  that the United States Patent and Trademark Office (USPTO) ban on “immoral” or “scandalous” trademarks could not withstand a First Amendment challenge.

Los Angeles artist Erik Brunetti sued the government, arguing that the USPTO violated the First Amendment by refusing to register the “FUCT” trademark for his clothing line. Justice Kagen wrote that according to Brunetti, the mark is pronounced as four letters; F-U-C-T. “But you might read it differently and, if so, you would hardly be alone.”

Justice Kagen put the issue to bed, saying “[t]he most fundamental practice of free speech law is that the government can’t penalize or disfavor or discriminate against expression based on the ideas or viewpoints it conveys.”  Five Justices joined Kagan’s opinion. Other Justices feared the ruling went too far, leaving the USPTO powerless to refuse registration to, as Justice Sotomayor suggested, … the most vulgar, profane or obscene words or images imaginable.

A similar issue was addressed by the Supreme Court two years ago. An Asian American rock group challenged the law against registering “disparaging” trademarks, in that case, their name, the “SLANTS”. That law was held unconstitutional. Closer to home, the SLANTS were supported by the Washington Redskins. The team battled for many years against a claim of disparagement from Native Americans, to keep their federal registrations for the name “Washington Redskins”. The SLANTS case, in effect, ended that battle.

What does the Brunetti case mean for the future of trademarks? At the moment, more “colorful” marks, that previously would have been adjudged to be immoral or scandalous, will be allowed to be registered. There are a number of such marks on hold at the Trademark Office, pending the Brunetti decision. Many thousands of new marks are likely to follow, and there may be a race to the Trademark Office to see who can register the most immoral or scandalous trademarks first. 

In a footnote, Justice Kagen suggested that Congress must rewrite and narrow the law, for example, to forbid only “lewd, sexually explicit, or profane marks.” Time will tell if Congress acts. For now, the floodgates appear to have been opened, allowing federal registrations of words that express all viewpoints.  You can now choose and potentially register your own examples, if it suits your business purpose.

If you are seeking to register these type of trademarks, or even those less scandalous, reach out to your Butzel Long Intellectual Property attorney or the author of this Alert.

John L. Beard
202.454.2824
beard@butzel.com

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