The Height Of Vulgarity

Judith Soto,

In saturated markets, many brands have to push the boundaries to be heard above the cacophony of marketing noise. Kmart’s ‘ship my pants’ and Kraft’s ‘get your chef together’ are genius examples of how using risqué wordplay can create catchy advertisements and brand awareness. But how far can the envelope be pushed?We will soon find out. The US Supreme Court has agreed to hear a case concerning the application to register a trademark for the brand “FUCT”. The U.S. Patent and Trademark Office (USPTO) refused to register the trademark “FUCT” reasoning that “FUCT is the past tense of a vulgar word and is therefore scandalous” a federal appeals court said. This decision was overturned by the appeals court on the grounds that denying the trademark was an unconstitutional restriction of free speech.

The case will decide whether the 2017 decision in Matal v Tam 137 S. Ct. 1744 (2017), in which the Supreme Court ruled that the Lanham Act’s (also known as the Trademark Act of 1946) disparagement clause violated the right to free speech guaranteed by the Constitution, extends to trademarks which could be considered vulgar. Consideration of the issues around such a case go to the heart of morality; an area where American and European standards and values differ considerably.

Matal v Tam

Section 2(a) of the Lanham Act prohibits the registration of trademarks which “consists 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…”.

The case of Matal v Tam concerned an Asian American rock band called ‘The Slants’. In 2010 the group filed for a trademark to protect the band’s name in 2010. The application was rejected by the USPTO on the grounds it was disparaging to people of Asian descent and therefore violated section 2(a). Simon Tam, of the Portland-based band, told the New York Times:
“I took a moment,” Tam said. “I was like, O.K. Let me refresh my brain, make sure I remember what the word disparaging means. Then I said, ‘Well, do they know we’re of Asian descent?’”

Deciding whether a trademark is ‘disparaging’ involves a two-stage test:
a) Establish the “likely meaning” of the element at issue, and
b) If that meaning refers to “identifiable persons, institutions, beliefs or national symbols,” then the second task is to determine whether it is “disparaging to a substantial composite of the referenced group.”

Mr Tam unsuccessfully challenged registration refusal before the examiner and then the PTO’s Trademark Trial and Appeal Board (TTAB).

On appeal, a panel of the Federal Circuit affirmed the TTAB’s determination. However, the en banc Federal Circuit held that the First Amendment’s Free Speech Clause rendered the disparagement clause unconstitutional. The Supreme Court agreed, with Justice Alito writing that trademarks are not government speech: “If private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints”.

In addition, the Supreme Court expressed concern that if the disparagement clause was upheld for trademarks, copyrighted works could be made subject to similar restrictions. The decision in Tam is has also resolved another multi-year section 2(a)-based litigation between the Washington Redskins and Native American activists. In 1992, the activists petitioned the patent office’s Trademark Trial and Appeal Board to cancel the Redskins’ marks and the parties have been slugging it out in the courts ever since. The Board has cancelled the team’s trademarks twice, once in 1999 and again in 2014, with the Redskins losing their last appeal in 2015. However, following the Tam decision the Supreme Court vacated the judgment of the district court which cancelled the registrations.

FCUK – a UK perspective on vulgarity

The UK equivalent to Section 2(a) of the Lanham Act is Section 3(3)(a) of the Trademarks Act 1994. The section states a trademark will not be registered if it is “contrary to public policy or to accepted principles of morality”.

French Connection UK faced a battle regarding the trademark of its name which it had held since 1998. A member of the public, Mr Dennis Woodman, took offence to the play on an offensive expletive (of which I am sure, dear reader, you can work out) and applied to have it deleted from the Registry of Trademarks.

The Appointed Person upheld the trademark rejected Mr Woodman’s argument that the wording “FCUK” essentially amounted to the word “f**k” because “FCUK” was neither identical phonetically or visually to the offensive word. It might be interpreted as the swear word depending on the circumstances and way in which it is used but it was not the swear word itself. Although the mark may have brought the ‘other’ word to mind, it also stood as a true acronym for French Connection UK. Therefore, the mark was not intrinsically created to cause offence.

However, things do not always go a corporation’s way in Europe. In April 2018, the General Court in the EU handed down its judgement in La Mafia (La Mafia Franchies v EUIPO, T- 1/17), holding that the mark ‘La Mafia se sienta a le mesa’ promoted the criminal organisation, known as the Mafia, and therefore was not registerable on public policy grounds. According to the Court, the word mafia is internationally recognised as a criminal organisation linked with violence, prostitution, drugs and arms trafficking, and extortion; criminal behaviour that breaches the very values the European Union was founded on. The mark was therefore declared invalid.

The fate of FUCT

Will the Tam ruling extend to cover the clothing brands FUCT case? The Supreme Court was at pains not to remove all discretion from the USPTO. And if the Court interprets the First Amendment’s Free Speech Clause using the originalism doctrine, which has been firmly entrenched in legal academia and practice since the 1980s, the decision on the FUCT case may be very different to that of Tam. Could a reasonable person living in the late 18th century have possibly associated the original meaning of the right to speak their minds with the right to trademark a not so subtle play on a word which, while not necessarily being a swear word in their day, was used as a direct and vulgar way to refer to sexual intercourse?

We will watch with interest and update you as the case develops.

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By Judith Soto

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