FUCT!: Previously “Immoral” or “Scandalous” Marks Could Now Get Trademark Protection

By: Katherine E. Ruiz Díaz, Esq. and Francisco Dox, Esq.

July 16, 2019

In their latest term, the Supreme Court of the United States (“SCOTUS”) has issued various opinions on different issues on matters of intellectual property law. These issues range from the interpretation of the language of a statute to the infringement of constitutional rights. Marks previously branded as “immoral” or “scandalous” could now acquire trademark protection under the Lanham Act.

In Iancu v. Brunetti, Erik Brunetti, an artist and entrepreneur who founded a clothing line, sought federal registration for the trademark FUCT. The U.S. Patent and Trademark Office (“USPTO”) denied his application under a provision of the Lanham Act that, in broad terms, prohibits registration of “immoral” or “scandalous” trademark. In examining a trademark to determine whether it is immoral or scandalous, the USPTO asks whether a “substantial composite of the general public” would find the mark: (i) “shocking to the sense of truth, decency, or propriety,” (ii) “giving offense to the conscience or moral feelings,” (iii) “calling out for condemnation,” (iv) “disgraceful,” (v) “offensive,” (vi) “disreputable,” or (vii) “vulgar.” The USPTO, at examination and on appeal, held that Brunetti’s mark failed that test. The examining attorney determined that FUCT was a vulgar and therefore unregistrable trademark. On review, the Trademark Trial and Appeal Board affirmed that the mark was “highly offensive” and “vulgar,” and added that it had “decidedly negative sexual connotations.”

In response, Brunetti brought a First Amendment challenge to the “immoral or scandalous” bar in the U.S. Court of Appeals for the Federal Circuit, which invalidated the provision on constitutional grounds. SCOTUS ultimately affirmed the Federal Circuit’s decision. In an opinion delivered by Justice Elena Kagan, SCOTUS held that the facial viewpoint bias of the “immoral or scandalous” bar results in viewpoint-discriminatory application, and thus violates the First Amendment. In a previous case, Matal v. Tam, 582 U.S. ___ (2017), SCOTUS had already declared unconstitutional the Lanham Act’s ban on registering marks that “disparage” any person, “living or dead,” because it is viewpoint based. Therefore, SCOTUS held that the “immoral or scandalous” bar similarly discriminates on the basis of viewpoint and so collides with this Court’s First Amendment doctrine. The government had maintained that the statutory bar should be narrowed to prohibit marks that are offensive or shocking because of their mode of expression, independent of any views that they may express. However, SCOTUS rejected the government’s contention that the statute was susceptible of a limiting construction that would remove its viewpoint bias, and thus invalidated the provision.

Goldman Antonetti & Cordóva, LLC stands ready to assist you with any trademarks that may have been barred by these restrictions in the past, or any decision by federal or state trademark offices that you think can now be subject to review under this new change in the law. If you need further assistance in this area, please contact the following members of our firm:

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