FUCT?: Trademark Law Ruling Will Protect Certain Immoral and/or Scandalous Marks

June 27, 2019

Big Trademark Law Ruling

On June 24, 2019, in a 6-3 decision, the United States Supreme Court ruled that barring the registration of the trademark “Fuct” would infringe upon the applicant’s First Amendment rights. In 2011, Mr. Erik Brunetti (“Applicant”) applied to register the word mark “Fuct,” an acronym that (he maintains) was derived from the phrase FRIENDS U CAN’T TRUST, for use on various articles of clothing. During the initial filing process with the United States Patent and Trademark Office (“USPTO”), the Examining Attorney refused registration because he found that Fuct was the phonetic equivalent of the word “Fucked” and, therefore, an “immoral or scandalous” mark that was not eligible for registration. On appeal, the Examining Attorney’s refusal was affirmed by the Trademark Trial and Appeal Board (“TTAB”). The Applicant then challenged the TTAB’s trademark law ruling in the Court of Appeals for the Federal Circuit on First Amendment grounds. The Federal Circuit reversed the TTAB’s decision and certiorari was granted.

Why is it unconstitutional to refuse the registration of certain immoral or scandalous trademarks?

“Immoral or Scandalous” Marks and Trademark Law

Under Section 2(a) of the Lanham Act, any mark that “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” is not eligible for registration. Two years ago, in Matal v. Tam, the Supreme Court found that banning disparaging trademarks amounts to a bias against derogatory marks in favor of marks that are complimentary in violation of the First Amendment. In affirming the decision of the lower court in an opinion drafted by Justice Kagan, the Supreme Court applied the same rationale employed in the Tam case, namely that viewpoint bias is unconstitutional and to rule otherwise would “allow[] registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety.” In finding in favor of the Applicant, the Supreme Court ruled that certain “immoral or scandalous” marks may be registered with the USPTO.

The Future of “Immoral or Scandalous” Marks

Justice Kagan’s opinion was accompanied by multiple opinions that either concurred with, or concurred in part and dissented in part from, the majority opinion. All of the justices concurred in finding that the “immoral” prong of the trademark law statute violated the First Amendment, but three of the justices believed that the word “scandalous” could have been read more narrowly to only regulate marks that are obscene, vulgar or profane. The dissenting justices fear that the USPTO will now be forced to register marks “containing the most vulgar, profane, or obscene words and images imaginable.” Justice Sotomayor specifically expressed concern that this could pave the way to register “at least one particularly egregious racial epithet.” However, as Justice Alito points out in his concurring opinion, if it is the intent that the Lanham Act preclude registration of obscene, vulgar or profane marks, Congress should make that distinction and not the Supreme Court. Whether Congress will address this matter in the near future or at all is unclear. In the interim, the outcome of this trademark law case could yield results similar to those seen following the Tam case, which, among others, required the USPTO to restore trademark registration to the Washington Redskins mark after it had been cancelled in 2014 for violating the disparagement clause.

If you are interested in applying for trademark registration or need assistance with a trademark dispute, please e-mail us at info@kleinmoynihan.com, or call us at (212) 246-0900.

The material contained herein is provided for informational purposes only and is not legal advice, nor is it a substitute for obtaining legal advice from an attorney. Each situation is unique, and you should not act or rely on any information contained herein without seeking the advice of an experienced attorney.

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David Klein

David Klein is one of the most recognized attorneys in the technology, Internet marketing, sweepstakes, and telecommunications fields. Skilled at counseling clients on a broad range of technology-related matters, David Klein has substantial experience in negotiating and drafting complex licensing, marketing and Internet agreements.

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