Immoral, Scandalous And Disparaging Trademarks
Did you know that in the recent past immoral, scandalous, or disparaging categories of marks could never be protected as trademarks, even after being used in the marketplace?
On an international level, the Paris Convention for the Protection of Industrial Property was an important harmonization effort that dates back to 1883. In this regard, Article 6quinquies B of this treaty allowed signatory states to refuse to register a trademark if it was “contrary to morality or public order”. Signatory states modified their laws to meet their obligations under the treaty and many countries adopted this provision into their national laws.
For decades, U.S. law also prohibited trademarking marks that were disparaging and also marks that were immoral or scandalous. The recent Iancu v. Brunetti court case highlights the conflict found in this topic: namely the regulation versus freedom of expression! What should be considered as scandalous and immoral - without having any registration office’s viewpoint?
Immoral and scandalous marks
The case of Iancu v. Brunetti 139 S. Ct. 2294 - 2019 saw the United States Supreme Court rule that the provisions of the Lanham Act prohibiting registration of trademarks of "immoral" or "scandalous" matter is unconstitutional, as it permits the United States Patent and Trademark Office (USPTO) to engage in viewpoint discrimination, violating the freedom of speech clause in the First Amendment. The Iancu v. Brunetti case covers the evaluation of scandalous and immoral criterion of the Lanham Act - the subject word is FUCT in this case.
This article covers a memo on the recent decision of the US Supreme Court in Iancu v. Brunetti.
Section 2(a) of the Lanham Act prohibits the registration of trademarks which "consists of or comprises of 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…".
In 1990, Erik Brunetti and his business partner started a streetwear clothing brand in Los Angeles, California using the name FUCT, which stood for “Friends U Can't Trust”. Brunetti felt that the name's phonetic similarity to the expletive of similar spelling was confusing - as well as amusing!
Twenty years after the launch of the clothing line, instances of FUCT products being sold online by individuals other than Brunetti led him to file a trademark for the name FUCT at the USPTO. A full transcript of the argument can be found here.
The mark was denied on the grounds of it being phonetically similar to a well-known vulgar word, which was well-established as a "scandalous" word under Section 2(a) of the Lanham Act. The USPTO decision was upheld by the Trademark Trial and Appeal Board (TTAB) in 2014.
Brunetti appealed to the United States Court of Appeals for the Federal Circuit. Before the oral arguments were heard, the Supreme Court decided on Matal v. Tam 582 U.S. ___ (2017). Tam concerned an Asian American rock band called 'The Slants'. In 2010 the group filed for a trademark to protect the band's name but the USPTO rejected the application on the grounds it was disparaging to people of Asian descent and therefore violated section 2(a). In a decision upheld by the Supreme Court, the Federal Circuit held that the First Amendment's Free Speech Clause rendered the disparagement clause unconstitutional.
The Federal Circuit deciding on the Brunetti case followed Tam, stated that trademarks were private rather than government speech, having no viewpoint on any type of discrimination.
The Supreme Court decision
In a majority 6-3 decision, written by Elena Kagan, the Supreme Court upheld the Federal Circuit's decision. She declared that the USPTO had to engage in, "viewpoint discrimination" to ascertain if trademark requests fell into the vague definitions of "immoral" or "scandalous". Because the USPTO is a government entity, this would be a contravention of First Amendment rights; therefore, the Lanham Act, section 2 (a) was unconstitutional.
"[a]t a time when free speech is under attack, it is especially important for this Court to remain firm on the principle that the First Amendment does not tolerate viewpoint discrimination.
Justice Alito also wrote a majority opinion, stating that the legal definition of 'immoral' and 'scandalous' was vague; however, Congress had the power to change this.
"a law banning speech deemed by government officials to be 'immoral' or 'scandalous' can easily be exploited for illegitimate ends."
It was also pointed out that the USPTO had a historically inconsistent track record in registering provocative marks, granting registration for some and denying the same treatment to others, seemingly at random.
In the dissenting opinions, written by Chief Justice Roberts and Justices Breyer and Sotomayor, it was agreed that the interpretation of 'immoral' was difficult but the same did not apply to the word 'scandalous'. They also held that USPTO would not be engaging in 'viewpoint discrimination' when deciding on whether or not a mark was 'scandalous'.
"Adopting a narrow construction for the word "scandalous"—interpreting it to regulate only obscenity, vulgarity, and profanity—would save it from unconstitutionality. Properly narrowed, "scandalous" is a viewpoint-neutral form of content discrimination that is permissible in the kind of discretionary governmental program or limited forum typified by the trademark-registration system."
This decision, read alongside Tam, deems Section 2(a) of the Lanham Act unconstitutional from the perspective of the Supreme Court, with the current practice of the Office. It is now for Congress to legislate for unambiguous meanings of the words' immoral' or 'scandalous' as they apply to trademarks if it wants to prevent marks such as FUCT being registered.
Brunetti was interviewed in May 2019 (just before the Supreme Court decision) by online skateboarding and culture magazine Jenkem and was asked how the outcome of the case would affect his brand. He stated:
“Well, if I win the case—the verdict comes in June—I’ll be able to shut down the tremendous amount of bootlegging that’s been happening for years. It will also enable me to eventually sell the brand if I so choose”.
His wish came true.
At the time of writing owner Brunetti has 3 valid and 7 pending trademark applications which contain the mark text FUCT for Nice Classes 9, 14, 18, 25 and 35 all with the USPTO. He also has 1 pending mark with Italy’s UIBM in Class 25.
ExaMatch analysis of Brunetti’s FUCT trademark activity
The top 10 products are all found in Nice Class 25 (Clothing) with ‘Footwear’ taking pole position (appearing on 6 applications), followed by ‘Sweater ‘, ‘Shirts’, ‘Trousers’, ‘Caps [headwear] ‘, ‘Vest tops ‘ and ‘Jackets’ (all found on 5 applications).
Tune into “Talkin’ Marks” and learn more
Our sixth podcast episode covers the issue of immoral and scandalous trademarks in more depth.
Your “Talkin’ Marks” co-hosts, Trademark Counsel and a member of the INTA Publication Committee, Gökcen Uzer Cengelci and Trademark Executive Zac Casstevens, are joined in this episode by expert guest speaker Colin Manning. Manning is an intellectual property lecturer at Cork Institute of Technology in Ireland and a practising European trademark attorney.
In this episode they focus on two important questions:
- What constitutes immoral and scandalous trademarks today?
- What will the future hold for these kinds of trademarks?
This episode also covers precedent decisions in the US such as REDSKINS-SLANTS and IANCU BRUNETTI. And, the hosts also touch upon the recent EU decision on FACK JU GOHTE.
Your “Talkin’ Marks” co-hosts discuss the subcategories of these trademarks and explore in more detail the conflict between regulation versus freedom of expression.