Member Article

Four years ago, trademark owners who sought to register brands considered “immoral,” “scandalous,” or “disparage[ing]” would have, under a prohibition in 15 U.S.C. §1052(a), received a firm rejection from the United States Patent and Trademark Office (USPTO). Under this regime, brand owners seeking to register, for example, holy figures in connection with alcohol or creatively named rooster-shaped lollipops, were out of luck. (See, e.g., In re Riverbank Canning Co., 95 F.2d 327, 329 (C.C.P.A. 1938); In re Fox, 702 F.3d 633 (Fed. Cir. 2012).)

In 2016, the tide began to turn as the United States Supreme Court struck down as unconstitutional the provision against the registration of disparaging marks. In the landmark case Matal v. Tam, the Supreme Court addressed the USPTO’s refusal to register the mark THE SLANTS for an Asian-American rock group. Matal v. Tam, 582 U.S. _ (2017). The Court held the ban on disparaging marks was an impermissible restriction of speech in violation of the First Amendment. In light of this ruling, trademark owners were free to disparage others, as long as that disparagement was not scandalous or immoral.

In the wake of Tam, the USPTO continued to reject marks deemed scandalous or immoral, including the mark FUCT used on clothing by entrepreneur and artist Eric Brunetti. Upon review, the Trademark Trial and Appeal Board (TTAB) deemed the mark “highly offensive” and “vulgar” with “decidedly negative connotations.” Now, after the Supreme Court’s long-awaited decision in Iancu v. Brunetti, offensiveness is no longer justification for the USPTO’s refusal to register a trademark.

The Court held prohibiting registration of allegedly scandalous and immoral trademarks is viewpoint-based and a violation of the Constitution’s First Amendment. In considering whether a mark should be refused, “the PTO asks whether a ‘substantial composite of the general public’ would find the mark ‘shocking to the sense of truth, decency, or propriety’; ‘giving offense to the conscience or moral feelings’; ‘calling out for condemnation’; disgraceful’; offensive’; ‘disreputable’; or ‘vulgar.’” (In re Brunetti, 877 F.3d 1330, 1336 (Fed. Cir. 2017).) This resulted in registration of marks that conform to societal standards while rejecting their “offensive” counterparts. The Supreme Court cited, for example, the registration of D.A.R.E TO RESIST DRUGS AND VIOLENCE while the antithetical BONG HITS 4 JESUS was rejected. The Court saw these as blatant evidence of viewpoint discrimination in violation of the First Amendment.

Attorneys for the USPTO had suggested the statutory bar should be narrowed to encompass only marks that are offensive or shocking because of their mode of expression, rather than the views expressed. This reframing would avoid viewpoint discrimination, while continuing to restrict the registration of lewd or vulgar marks – presumably including FUCT. The Court rejected this argument as an impermissible rewriting of the statute as it is clear that, as written, the statute covers far more than lewd or vulgar marks, and limiting the statute in that way is a task for Congress, not the Court. As Justice Kagan put it, “There are a great many immoral and scandalous ideas in the world (even more than there are swearwords), and the Lanham Act covers them all.”

The holding, which says “nothing at all” about a statute that covers only “lewd, sexually explicit, and profane marks,” left the door open for Congress to pass a more narrowly tailored version of the statute. But unless that happens, immorality and scandalousness will no longer prevent the registration of trademarks.