June 25, 2019

Supreme Court Defends Free Speech – Registration of Profane Words As Trademarks Now Clearly Permitted in the US

On June 24, 2019, the Justices struck down as unconstitutional a provision of the Lanham Act (US Trademark Law) that prohibited granting federal trademark protection for "immoral" or "scandalous" material.

The case was brought by Erik Brunetti, who founded a streetwear clothing line in 1991 using the word “FUCT”.Initially, Brunetti’s application was refused on grounds that the “FUCT” trademark was immoral or scandalous.A federal court overturned that decision of the US Trademark Office, prompting the government's Supreme Court petition, Iancu v. Brunetti.

The vote was 6-3 in an opinion written by Associate Justice Elena Kagan. Chief Justice John Roberts and Associate Justices Stephen Breyer and Sonia Sotomayor dissented.

"The First Amendment does not allow the government to penalize views just because many people, whether rightly or wrongly, see them as offensive," Kagan said from the bench in announcing the decision.

The three dissenters agreed that "immoral" covers too broad an array of potential trademarks but said the ban on "scandalous" trademarks should stand.

"Refusing registration to obscene, vulgar or profane marks does not offend the First Amendment," Roberts said. "The First Amendment protects the freedom of speech; it does not require the government to give aid and comfort to those using obscene, vulgar and profane modes of expression."

And Sotomayor said that under the court's ruling, "the government will have no statutory basis to refuse (and thus no choice but to begin) registering marks containing the most vulgar, profane or obscene words and images imaginable.”

During oral argument in April, several Justices worried that a ruling for the FUCT clothing line would lead to even more vulgar trademarks, such as racial pejoratives. Chief Justice John Roberts called it the "promotion of vulgarity."

But the US Trademark Office has not consistently refused registration for similar marks suggestive of the F—K word.In briefing to the Court, Brunetti’s attorney listed 34 words that might sound scandalous. Words like FCUK, FWORD, and WTF IS UP WITH MY LOVE LIFE? have been registered as trademarks.

Moreover, the government already could not stop Brunetti from selling his clothing using the “FUCT” branding, which the Justice Department pointedly noted are available even in children's and infants' sizes. The issue in the Supreme Court was whether he deserved to register his trademark – a federal benefit that makes it harder for competitors to challenge.

The Brunetti "FUCT" case is the second one in three years contesting trademark registration restrictions. In 2017, the Court ruled unanimously in Matal v. Tam that trademarks considered to be disparaging nonetheless deserve First Amendment protection. There, the mark was “The Slants” referring to a band of performers who are Asian, a name they said they re-appropriated as a badge of pride.The Court’s majority decision in Brunetti is consistent with the decision in “The Slants” case.

Although not a party to the Brunetti case, perhaps the biggest winner is The Washington Redskins football organization.Following complaints from Native Americans that use of “Redskins” is scandalous, the team’s US trademark registrations had been canceled.However, with the Lanham Act provision on which cancellation had been based now ruled unconstitutional, the team should maintain its commercially valuable “Washington Redskins” trademark registrations.


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