On June 24, 2019, in Iancu v. Brunetti, fashion designer Erik Brunetti appealed a decision by the US Patent and Trademark Office (PTO) denying his application to federally register the trademark “FUCT.” The PTO had previously denied the trademark application under a provision of trademark law that prohibits registration of “immoral or scandalous” trademarks. However, in a landmark decision, the Supreme Court ruled in Brunetti’s favor, finding that the “immoral or scandalous” prohibition violates the First Amendment.
Brunetti founded a clothing line using the trademark FUCT, pronounced one letter after the other: F-U-C-T. But read differently, it’s pretty clear what it sounds like, or as the PTO so eloquently described it; “the equivalent of [the] past participle form of a well-known word of profanity.”
The PTO determined that FUCT was vulgar and, therefore, unregistrable. On review, the PTO’s Trademark Trial and Appeal Board affirmed, declaring the trademark to be “highly offensive” and “vulgar” and noting the “negative sexual connotations.” Brunetti responded by arguing that the “immoral or scandalous” bar on trademarks violates the First Amendment.
In evaluating Brunetti’s challenge, the Supreme Court considered its decision just two terms earlier in Matal v. Tam, 137 S. Ct. 1744 (2017), in which the Court declared a ban on registering “disparaging” trademarks unconstitutional. In Matal v. Tam, an all- Asian American rock band called “The Slants” brought suit when they were denied a trademark for their band name as racially disparaging. The Court explained that in Tam, it had reached two conclusions: (1) if a trademark registration bar is viewpoint-based, it is unconstitutional, and (2) the disparagement bar was viewpoint-based. That is, “the government may not discriminate against speech based on the ideas or opinions it conveys.”
In determining whether the “immoral and scandalous” bar is viewpoint-based, the Court went straight to the dictionary, defining the terms as being inconsistent with “good morals” or “giving offense to the conscience or moral feelings,” respectively. The Court recounted previous PTO registration decisions, in which the PTO refused to register marks communicating “immoral” or “scandalous” views about drug use, religion, and terrorism. Yet, the PTO approved registration of trademarks expressing more accepted views on the same topics, such as religious based brands. Thus, the Court determined that “the facial viewpoint bias in the law results in viewpoint-discriminatory application.” As such, the “immoral or scandalous bar” violated the First Amendment.
So what does this all mean? In a nutshell, this decision is likely to allow registration of a wider selection of trademarks. Words and marks previously thought too scandalous or vulgar for registration may now be granted protection under the First Amendment. The Court determined that it is not the place of the PTO, and the inherently biased examiners, to determine whether a mark is moral or not. The door is now open for a new broad variety of trademarks. Now is the time to register your trademark if you thought it might be refused as immoral or scandalous. The trademark lawyers at Creative Law Network would love to talk to you about this new change and how we can help you register a trademark, scandalous or not!
