You’re no Longer Screwed if You Want to Register that Vulgar Trademark
On June 24, 2019, the U.S. Supreme Court issued its decision in Iancu v. Brunetti and struck down a provision in the Lanham Act (15 U.S.C. § 1052(a)) prohibiting the registration of “immoral” and “scandalous” trademarks, holding that it violates the First Amendment. Following this decision, are the doors to the United States Patent and Trademark Office (“USPTO”) finally open to anyone wanting to register any vulgar, offensive, or obscene trademark they choose?
Back in 2011, Los Angeles artist Erik Brunetti’s predecessors filed a trademark application for “FUCT” for various clothing products and later assigned the application to Brunetti. The USPTO examining attorney refused to register the application, asserting that the FUCT mark was scandalous under §1052(a). On appeal, the USPTO’s Trademark Trial and Appeal Board affirmed the examiner’s decision, concluding that FUCT is vulgar and therefore not registrable.
Brunetti appealed the USPTO’s decision to the U.S. Court of Appeals for the Federal Circuit, the same court that issued the 2015 decision in In re Tam that the U.S. Supreme Court later affirmed in Matal v. Tam in 2017. In that case, U.S. Supreme Court struck down the disparagement clause in §1052(a) which had prohibited the federal registration of trademarks that disparaged people, institutions, beliefs, or national symbols.
In 2017, the Federal Circuit ruled in In Re Brunetti that the immoral and scandalous provision of §1052(a) chilled free speech and impermissibly discriminated against certain trademarks based on their content, thereby violating the First Amendment. The federal government appealed that decision to the U.S. Supreme Court.
THE Iancu v. Brunetti DECISION
In a 6-3 decision authored by Justice Elena Kagan, the majority held that the “immoral or scandalous” provision violates the First Amendment by discriminating on the basis of viewpoint and disfavoring “certain ideas.” Justice Kagan provided examples of trademarks the USPTO had rejected (e.g., BONG HITS 4 JESUS or KO KANE) or accepted for registration, and wrote that “[t]he rejected marks express opinions that are, at the least, offensive to many Americans. But as the Court made clear in Tam, a law disfavoring ‘ideas that offend’ discriminates based on viewpoint, in violation of the First Amendment.” The majority rejected the federal government’s claim that the “immoral or scandalous” prohibition “is viewpoint-neutral” or could be saved by construing it narrowly, finding that it was “substantially overbroad” and therefore unconstitutional.
Chief Justice John Roberts and Justices Stephen Breyer and Sonia Sotomayor each wrote divided opinions concurring and dissenting in part. Roberts agreed with the majority that the “immoral” portion could not be narrowly construed but thought like Sotomayor that the “scandalous” portion could be. Breyer concurred with the majority that the prohibition on registering “immoral” marks violates the First Amendment but dissented with respect to “scandalous” marks. He also joined Sotomayor’s divided opinion in which she expressed worry that the USPTO would have “no statutory basis to refuse (and thus no choice but to begin) registering marks containing the most vulgar, profane, or obscene words and images imaginable.” She also proposed separating “scandalous” and “immoral,” eliminating just the “immoral” prong, and construing “scandalous” narrowly.
Justice Sotomayor expressed concern that the Iancu v. Brunetti decision could trigger a “rush to register” vulgar, profane, or obscene marks at the USPTO. It remains to be seen, however, how the USPTO will handle such trademark applications and whether it will increase its scrutiny of them in other ways.
Although the USPTO should no longer be able to refuse a trademark application merely for containing vulgar, offensive or obscene terms, each trademark applicant must still satisfy the numerous other trademark filing requirements. For example, an applicant’s vulgar trademark must still function as a trademark in interstate commerce, i.e., must act as a source indicator for all applied-for products or services. Applicants also must make sure that each applied-for trademark is distinctive and isn’t identical or confusingly similar to any previously registered or applied for trademarks (among numerous other requirements).
Whether a trademark application can satisfy these and numerous other USPTO filing requirements depends on the specific trademark and the information provided in each application. As such, applicants should always discuss the particulars of their situation with an experienced trademark attorney before investing the time and money to apply.
About the Author: Michael B. Dvoren is a partner and intellectual property attorney at Jaburg Wilk, where he assists clients with various intellectual property matters, including protection, enforcement, litigation and transactions. He has successfully registered hundreds of trademarks and can assist clients in all areas of trademark law.