In a decision surprising absolutely nobody, on Monday the Supreme Court ruled that the U.S. Patent and Trademark Office (USPTO) could not refuse to register trademarks even if they are “immoral or scandalous.” The trademark at issue involved the use of the mark “FUCT [F-U-C-T]” for clothing and merchandise.
The Court held that the First Amendment right to free speech trumps Section 1052(a) of Lanham Act (Section 2(a)), which prohibits the use of “immoral, deceptive, or scandalous matter; or matter which may disparage….”
The Slants, the Washington Redskins and Free Speech vs. Disparaging Trademarks
The Court’s recent decision was merely the final domino to topple in the domino chain reaction that started back in 2010 when Simon Shiao Tam, the lead singer for an Asian rock band attempted to register “The Slants” as the name of the band. The USPTO rejected The Slants’ application, finding it was disparaging to people of Asian descent. Tam appealed, and the Federal Circuit Court ultimately held that the USPTO’s refusal to register the trademark violated Tam’s First Amendment right to free speech. The Supreme Court affirmed the Federal Circuit Court’s decision, holding that the disparagement clause of Section 2(a) “violates the Free Speech Clause of the First Amendment.”
The Supreme Court’s Tam decision effectively rescued the Washington Redskins’ trademarks, which the USPTO was in the process of cancelling as disparaging to Native Americans.
The FUCT Trademark, and the Final Domino
The Slants and Washington Redskins’ trademarks addressed Section 2(a)’s prohibition of disparaging trademarks, but the FUCT trademark attacked Section 2(a)’s prohibition of “immoral or scandalous matter….” When Erik Brunetti sought to register the mark FUCT for his clothing brand, the USPTO refused to register the mark, finding that “‘FUCT’ is the past tense of the verb ‘fuck,’ a vulgar word, and is therefore scandalous.” Brunetti appealed, the Federal Circuit agreed that the mark FUCT is vulgar, but followed the Supreme Court’s Slants decision, holding that “the bar in Section 2(a) against immoral or scandalous marks is unconstitutional because it violates the First Amendment.”
Justice Kagan, writing for a 6-3 majority, held that “the Lanham Act’s prohibition of ‘immoral [ ] or scandalous’ trademarks violates the First Amendment.” The Court noted that historically the USPTO would refuse to register a mark if the mark was “shocking to the sense of truth, decency, or propriety” or “giving offense to the conscience or moral feeling.” The Court noted and did not disagree with the USPTO’s conclusion that the FUCT mark “flunked the test” and was “a total vulgar.” However, Brunetti brought a facial challenge, basically conceding that his mark was vulgar but arguing that the “immoral or scandalous” prohibition violated his First Amendment right to free speech. The Supreme Court agreed that Section 2(a)’s prohibition of immoral and scandalous marks is unconstitutional.
As I wrote last year, the Court’s decision is likely to spur a race to the bottom, with certain businesses seeking to gain attention and market share via shocking, vulgar and/or scandalous trademarks from the USPTO.