Can Vulgar-Sounding Words or Terms Be Trademarked?

By limiting the discretion of the USPTO, the Supreme Court broadened the potential marks that can be federally registered.

By , Attorney

Until recently, anyone wishing to register a trademark for federal protection had to make sure it wasn't "scandalous" or "immoral," and thus unable to receive federal trademark status. This was based on a 1946 statute saying that the U.S. Patent and Trademark Office (USPTO) had to deny the registration of such a mark. Over the years, however, many questioned whether the First Amendment to the U.S. Constitution truly permits the U.S. government to act as a censor in this manner.

Then in 2019, the U.S. Supreme Court decided the case of Iancu v. Brunetti. It determined that the USPTO could not block a trademark merely because it believed the proposed mark to be offensive.

How Scandalous Was the Trademark at Issue?

Erik Brunetti, an artist and entrepreneur, developed a clothing line he creatively called "FUCT." While registration of a trademark is not required in order for an owner to use the mark in commerce, it confers many benefits in the event that another person or business infringes on (in other words, steals) it. That's why many business owners attempt to register their marks with the USPTO, as Brunetti did.

Upon reviewing his application, the USPTO's trademark attorney refused to register the mark, citing 15 U.S.C. 1052(a) of federal law, namely the Lanham Act (15 U.S.C. §§ 1051 et seq.). That law provides, in part, that marks should not be given registration status if they include words that are vulgar or immoral.

Specifically, 15 U.S.C. 1052(a) states that a mark should be rejected if it "[c]onsists of or comprises immoral... or scandalous matter."

The USPTO felt that "FUCT"—a homonym for a well-known curse word—fell into this category.

Brunetti appealed the decision to the Trademark Trial and Appeal Board, the USPTO's internal appeals board, often known as the TTAB. The TTAB affirmed the decision not to register the name based on the prohibition in the Lanham Act.

Once again, Brunetti appealed the decision, this time to the U.S. Court of Appeals for the Federal Circuit, which hears appeals on a wide variety of intellectual property law cases. The federal circuit found that while the TTAB correctly applied existing law, the law itself was unconstitutional because it conflicts with the First Amendment's prohibition on the government exercising viewpoint discrimination—that is, determining what sorts of speech are, or are not, acceptable.

Consequently, it struck down the law. The U.S. Supreme Court then agreed to review the case.

Supreme Court's Decision Allowed the Scandalous Name

In a 6-3 decision authored by Justice Elena Kagan, the Supreme Court affirmed the decision of the federal appellate court and held that the Lanham Act's prohibition on the registration of "immoral" or "scandalous" trademarks violates the First Amendment.

The opinion built on the holding of Matal v. Tam, a 2017 case in which the Supreme Court struck down a similar provision of the Lanham Act that prohibited registration of trademarks that might "disparage... or bring... into contemp[t] or disrepute" any "persons, living or dead." 15 U.S.C. § 1052(a). In that case, a musical group called "The Slants" tried to register its name for a federal trademark, but the USPTO refused on the grounds that the name could be a racial slur against Asians.

The Court, however, found that the First Amendment does not permit the government to engage in this sort of viewpoint discrimination, regardless of whether or not a mark may be offensive. "It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend," wrote Justice Samuel Alito.

In Iancu, the Court further expanded that interpretation of the First Amendment to another provision of the Lanham Act. "If the 'immoral or scandalous' bar similarly discriminates on the basis of viewpoint, it must also collide with our First Amendment doctrine," Justice Kagan wrote. The USPTO cannot exercise this sort of viewpoint discrimination.

What Supreme Court's Iancu Decision Means for Future Trademarks

The Iancu decision has important ramifications for federal trademark registrants, or at least those who hope to use shocking, vulgar, or offensive terms in their trademarks.

By limiting the discretion of the USPTO, the Supreme Court has broadened the potential marks that can be federally registered. In that way, Iancu represents a victory for First Amendment advocates.

As several of the justices warned, however, this decision could (and probably will) result in marks that are vulgar or offensive, including those that are sexually explicit or racially provocative. Nevertheless, the Court's majority determined that the First Amendment does not permit a government agency to deny registration on the basis of perceived obscenity.

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