Frankfurt Kurnit Klein & Selz

June 26th, 2019

Supreme Court Says “Scandalous” Trademarks May be Registered

Here’s some news for brands, creators, and other entities developing nonconforming names or entertainment content. Yesterday, the Supreme Court ruled that FUCT and other profane, “scandalous” or “immoral” words may be registered as trademarks. Until this decision, the US Patent and Trademark Office (“USPTO”) had been relying on a section of the Lanham Act to refuse registration of marks containing explicit profanity or communicating unaccepted views on, for example, drug use or religion. That section of the Lanham Act prohibited registration of trademarks that “[c]onsist[ ] of or comprise[ ] immoral[ ] or scandalous matter.” The Supreme Court held that provision of the Act to be unconstitutional viewpoint discrimination. Trademark owners previously refused registration on the basis of offensiveness may now reapply. 

Background.
Since 2011, Erik Brunetti has been seeking to federally register the trademark FUCT for his street wear, counter-culture clothing brand. While FUCT stands for Friends You Can’t Trust, when pronounced aloud it sounds like (as the government argued) “the equivalent of the past participle form of the paradigmatic profane word in our culture.” 

Trademark rights in the U.S. are based on use of a mark in commerce, so federal registration is not strictly necessary for doing business. But registration brings many important benefits. For example, registered trademarks are generally easier to enforce and license, may be used as the basis for registrations in other countries, and are granted nationwide priority.   

The USPTO refused to register FUCT citing the Lanham Act’s prohibition against registration of immoral or scandalous material. A federal appeals court held that Brunetti should have been permitted to register FUCT – citing to the Supreme Court’s 2017 decision in Matal v. Tam. In Matal, a similar provision against “disparaging” marks was held unconstitutional paving the way for registration of THE SLANTS by an Asian-American rock band. 

Here, the USPTO appealed to the Supreme Court arguing that allowing registration of FUCT and others like it would force the government to associate itself with profane speech, and that the government has an interest in protecting consumers from offensive content. Brunetti argued that the statute is unconstitutional on its face because it allows the USPTO to determine what is or is not immoral. Both sides agreed that the statute had been applied inconsistently over time with certain words being denied as “scandalous” one year and permitted the next.  

Yesterday, the Supreme Court followed its reasoning from Matal v. Tam and held that the “immoral or scandalous” bar is unconstitutional. The Court reiterated that trademarks are expressive material and that profanity is protected under the First Amendment. The justices noted that the USPTO has been permitting registration of marks that “champion society’s sense of rectitude and morality, but not marks that denigrate those concepts.” The Court found this to be viewpoint discrimination because it is “distinguishing between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them; those inducing societal nods of approval and those provoking offense and condemnation.” 

Now, Brunetti finally should be able to register his brand. It will be interesting to see whether, as the government argued, this decision will “open the floodgates” for profane, shocking and offensive trademarks in the marketplace, or if it will have any effect at all on the trademarks we see in commerce. 

If you have questions about the Brunetti or Tam cases, or other trademark and brand management questions, please contact Rachel Santori at [email protected] or 212.705.4855, or any other member of the Trademark & Brand Management Group at Frankfurt Kurnit. To keep up with changes in copyright, trademark and right of publicity issues in all media, please check out our IP & Media Law Blog.