(Photo by Charley Gallay/Getty Images for RVCA)
For those who have been following the fight for registrability of scandalous and immoral trademarks, you may have heard that the Supreme Court of the United States (SCOTUS) recently issued its decision in Iancu v. Brunetti, a trademark case involving the USPTO’s refusal to register the trademark “FUCT.” In a win for First Amendment expression, SCOTUS sided with Los Angeles-based artist Erik Brunetti in permitting his trademark “FUCT” (in which he prefers to pronounce the letters individually as “F-U-C-T”) to proceed for federal registration. This decision may permit other potentially offensive trademarks to receive federal trademark registration, but there is definitely more to the story her the just registrability.
As I have written previously on this topic, the prospect of SCOTUS siding with Mr. Brunetti seemed more likely than not given its previous ruling in Matal v. Tam. In that case, SCOTUS ruled in favor of band-member/applicant Simon Tam of the Asian-American band The Slants regarding the application for federal registration of their band name, The Slants. Under Section 2(a) of the Lanham Act, a trademark is not federally registrable where such trademark ”[c]onsists 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….” Originally refused registration by the USPTO based upon this prohibition on “disparaging” trademarks, Mr. Tam and his band were eventually vindicated by SCOTUS in a unanimous ruling holding the Lanham Act’s prohibition on disparaging trademarks an unconstitutional restriction on the First Amendment’s Free Speech Clause. As a result, “disparaging” trademarks seemed to have a green light to registration.
In Iancu v. Brunetti, SCOTUS dealt with the “immoral” and “scandalous” references in Section 2(a) of the Lanham Act, but not unanimously. In a 6-3 decision authored by Justice Kagan, an interesting mix of justices (Ruth Bader Ginsburg, Clarence Thomas, Samuel Alito, Neil Gorsuch, and Brett Kavanaugh) held that the prohibition under the law was overly broad, violating free speech because “it disfavors certain ideas” and was essentially discriminatory. Looking at dictionary definitions to make the point, Justice Kagan wrote:
So, the Lanham Act allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety. Put the pair of overlapping terms together and the statute, on its face, distinguishes 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. The statute favors the former, and disfavors the latter. “Love rules”? “Always be good”? Registration follows. “Hate rules”? “Always be cruel”? Not according to the Lanham Act’s “immoral or scandalous” bar.
Interestingly, the dissenting justices indicted that they would have upheld Section 2(a) by construing it narrowly to ban “obscene, vulgar, and profane modes of expression.” In other words, you are free to use such terms as a trademark, but the USPTO should not be compelled to recognize and permit registration of such “obscene, vulgar, and profane modes of expression.”
So you can register “scandalous” and “immoral” trademarks — now what? As I wrote previously, just because you can do something doesn’t mean that you should do it. More importantly, this decision will likely not create a “rush” to register such trademarks because many such terms (at least the colorful ones that one may let slip out from time to time) are not necessarily conducive to operating as a trademark. Remember that trademarks operate to distinguish ones goods and services from those of another, or to designate origin — many “obscene, vulgar, and profane modes of expression” simply don’t do so on their own, and may require differences in spelling, logos, or other stylization along with acquired distinctiveness to qualify for such trademark protection. Further, such expression is not limited to words — commonly known physical expressions (like “flipping the bird”) are not exempt from the requirements for valid trademarks. As a result, I don’t see a rush to registering such marks anytime soon.
Although the decision is a victory for free expression, whether it will be a victory for trademark owners remains to be seen. Not every business is conducive to using some form of “obscene, vulgar, and profane modes of expression” to distinguish its goods and services, and I would venture to say that not many are courageous enough to build a brand around it. Don’t get me wrong — I stand with the majority in the SCOTUS decision in this case because the statute engenders a “facial viewpoint bias” that cannot avoid a “viewpoint-discriminatory application.” That said, your company (or client) should beware — not every person or business will be willing to create a brand around such controversial expression, and even if they do, such expression may not meet the requirements for federal trademark registration. So, tread carefully when addressing “scandalous” or “immoral” trademarks for your company (or clients), as you may end find yourself on the receiving end of some “colorful” expression if you’re not careful.
Tom Kulik is an Intellectual Property & Information Technology Partner at the Dallas-based law firm of Scheef & Stone, LLP. In private practice for over 20 years, Tom is a sought-after technology lawyer who uses his industry experience as a former computer systems engineer to creatively counsel and help his clients navigate the complexities of law and technology in their business. News outlets reach out to Tom for his insight, and he has been quoted by national media organizations. Get in touch with Tom on Twitter (@LegalIntangibls) or Facebook (www.facebook.com/technologylawyer), or contact him directly at tom.kulik@solidcounsel.com.
Kathryn Rubino is a Senior Editor at Above the Law, and host of 
