By Taylor Bullard, rising 3L at University Tennessee College of Law
Did you ever think the Supreme Court would write a 50-page opinion about the word “fuct”? They did just that in their recent opinion in Iancu v. Brunetti, 139 S. Ct. 2294 (2019), about the Lanham Act’s § 2(a) bar on registering trademarks the Patent and Trademark Office find to be “immoral” or “scandalous.” To determine whether a trademark is “immoral” or “scandalous” in violation of the Lanham Act, the Patent and Trademark Office considered whether people would find it “disgraceful, offensive, disreputable, or vulgar.” In Brunetti, the Court held that the bar on registering “immoral” or “scandalous” trademarks violates the Free Speech clause of the Constitution’s First Amendment. The reason: banning immoral or scandalous trademarks allows the United States Patent and Trademark Office (“PTO”) to unconstitutionally discriminate on a viewpoint-based rationale.
In 2011, Erik Brunetti applied for trademark registration for his streetwear brand “fuct” after seeing other manufacturers using his brand name on their merchandise. The applicant established “fuct” as a clothing brand in 1990 and, according to the applicant, there was only one complaint about the brand name’s vulgarity in the entirety of the brand’s existence, up to when he initially filed suit. The PTO denied his application because, according to the PTO, the mark is “immoral” and “scandalous.”
Brunetti argued that the word “fuct” is not necessarily immoral or scandalous because it does not refer to a sexualized situation, but rather refers to the colloquial use meaning “a difficult situation.” Further, he said the applicable provision of the Lanham Act should be stricken because it infringes on his Free Speech rights. In other words, Brunetti argued, the PTO discriminated against his mark because of the viewpoint he expresses through it.
In rejecting Brunetti’s application, the PTO cited the Urban Dictionary definition of “fuct,” as well as a screenshot of a Google Image Search for “fuct.” According to the PTO, both Urban Dictionary and Google established that “fuct” was an abbreviation for an offensive word (we are sure you can imagine which one). Before the Supreme Court, the PTO argued that the Lanham Act disallows the mark because of the highly sexualized imagery associated with the mark, and that the applicable provision is not a determination of person’s viewpoint, but rather an objective and reasonable bar with an important societal purpose.
Discriminating on the basis of viewpoint is unconstitutional. In the Supreme Court’s majority opinion, Justice Kagan describes the terms “immoral” and “scandalous” as delineating between marks “aligned with conventional moral standards and those hostile to them; those inducing nods of approval and those provoking offense and condemnation.” In other words, the term in question refer to a person’s viewpoint.
This case, Iancu v. Brunetti, reflects the Court’s recent opinion in Matal v. Tam, 137 S. Ct. 1744 (2017), holding that the PTO could not deny trademark registration applications to “disparaging” marks. In that case, the lead singer of an Asian-American rock band filed to register “The Slants” as a trademark. The band name, as the singer describes, is reclaiming an antiquated racial slur for those of Asian descent. This could beg the question: how can a word be “disparaging” if the person wishing to benefit from it is of the exact subset to which the word refers? The Court found this question is irrelevant. According to the Court, the real question is whether the government can deny a mark, even if it is disparaging. In Matal v. Tam, the Court held barring registration to a trademark because it is “disparaging” is unconstitutional because it discriminates on the basis of viewpoint. Justice Kagan said “viewpoint discrimination doomed the disparagement bar.”
Here, the PTO found the mark “fuct” to be “immoral” or “scandalous” based on information it found on Urban Dictionary and Google Image Search. This could beg the question: is a sexual term used in the context of referring to a nonsexual situation “immoral” or “scandalous”? Like in Matal, the Court said this question is irrelevant. The real question is whether the government can deny a mark, even if it is immoral or scandalous. The Court held that barring registration to a trademark because it is “immoral” or “scandalous” is unconstitutional because it discriminates on the basis of viewpoint. In a virtually identical fashion to Matal, viewpoint discrimination doomed the immorality and scandalousness bar.
Maybe the most apparent consequence for this decision will be an increase in trademark applications consisting of traditionally explicit references, because the PTO can no longer deny a mark simply because it is immoral or scandalous. The PTO has relied on the “immoral” or “scandalous” bar to reject several types of applications, and in many cases, with the support of the judicial system. In the relatively recent past (that is, from the 1970s to present), this included an increase in rejections for marks containing expletives or sexually explicit material. Before that, the PTO rejected applications based on religious concerns. For example, Senussi cigarettes were barred because the Senussi sect of Islam prohibits the use of cigarettes and Messias wine was barred because Messias is the equivalent of Messiah and Christianity’s relationship with alcohol is tumultuous, to say the least.
The provisions in § 2(a) that remain constitutional pertain generally to preventing deception in registered trademarks, whether it relates to geographic origin or the product underlying the trademark. Although this section could remain under judicial fire, the purpose of trademark is to prevent consumer confusion, so the provisions related to deception may very well stand the test of time.
The VLPA provides assistance with trademark applications. If you have questions about trademarks, contact the VLPA for more information.