Does the Supreme Court’s Lifting the Ban on “Immoral” and “Scandalous” Marks Allow You to Trademark Anything?July 2019
The U.S. Patent and Trademark Office (USPTO) does not accept every application for a patent or a trademark. For trademarks, the USPTO relies on the Lanham Act of 1946, which specifies limitations on what trademarks may be approved, thereby becoming "registered."
The Lanham Act includes a prohibition on trademarks which consist of
- immoral, deceptive, or scandalous matter; or
- matter that may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.
However, the second of these prohibitions has been rendered inoperative by the U.S. Supreme Court's 2017 decision in Matal v. Tam ("Tam"). The suit concerned an attempt by a musician to register the mark THE SLANTS for “live performances by a musical band”—in this case an Asian-American brand. The USPTO denied the registration, finding that the mark would likely be disparaging to persons of Asian descent. Simon Tam, the band's leader, appealed. The Court, in a unanimous ruling, found the Lanham Act’s prohibition against “disparaging trademarks” to be unconstitutional because it violated the First Amendment’s prohibition against viewpoint-based discrimination—where the government prevents speech (in this case, in the form of denying trademark registration) because of what the mark conveys—the idea behind the mark. (A similar and perhaps more famous case involving the trademarks for the Washington Redskins was likewise rejected by the USPTO. That appeal was made moot by the ruling in Tam.)
The first of the above prohibitions was struck down last month, by the Supreme Court's ruling in Iancu v. Brunetti ("Brunetti"). In 1990, Erik Brunetti started a clothing line, made distinctive by the lowercase letters “fuct” printed on each item. In 2011, after seeing others selling knockoffs of his clothes, he sought to register his trademark “FUCT”—an acronym for “Friends U Can’t Trust,” though with an obvious phonetic similarity to, as was said during oral arguments, “the profane past participle form of a well-known word of profanity.” The USPTO denied registration, concluding that the word was “scandalous” and forbidden under the Lanham Act.
The Supreme Court ruling in Brunetti, though not unanimous, reached a conclusion similar to that of two years earlier in Tam, that the ban on “immoral” or “scandalous” marks under the Lanham Act was also unconstitutional under the First Amendment, as such marks could be granted where the USPTO deemed their underlying messages to agree with “society’s sense of decency or propriety,” but would be denied where they went against those same norms. The Court cited the disparity in the USPTO’s decisions to grant marks for SAY NO TO DRUGS—REALITY IS THE BEST TRIP OF LIFE and PRAISE THE LORD, but deny marks for MARIJUANA COLA (“inappropriately glamorizing drug use”) and BONG HITS 4 JESUS (because “Christians would be morally outraged”). The Court admitted that though the USPTO’s decisions were defensible on the grounds of which of these marks would be potentially offensive to many Americans, the Lanham Act’s prohibition on “immoral” and “scandalous” marks was another form of viewpoint discrimination forbidden by the First Amendment.
Does this mean that you can now register your favorite four-letter expletive as a trademark? For the moment, the answer is probably yes. Further, by striking down both provisions completely, the Supreme Court’s ruling also raises questions beyond the use of expletives in trademarks. An example is whether trademarks can be registered if they include images that are pornographic (which may have significant ramifications in the adult entertainment industry) or suggest potentially illegal activities (which may have significant impact with regard to marketing of products where state and federal laws might differ as to legality, such as the possession and sale of cannabis).
Because of concern, as Justice Sotomayor stated in her dissent-in-part, that the decision in Brunetti will “beget unfortunate results,” Congress is likely to modify the Lanham Act with regard to certain types of mark. However, although Justice Alito stated that a more “carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas” would be acceptable, any limitations under such a revised statute will likely be challenged in court on the grounds that they constitute a form of viewpoint discrimination.
However, an application for a trademark that falls within these controversial areas would not be exempt from more routine restrictions. For example, one cannot register as a trademark for the name, face, or signature of a living person without that person’s consent, nor would a trademark be registered if it consists of the flag of any country, state, or municipality.
Most important, trademark registration universally requires that the mark be associated with particular goods or services “in commerce” and that the mark does not create confusion with a previously registered mark. This could lead to a race to the USPTO to register explicit marks. However, it isn't clear that an expletive can be readily used in commerce when the seller might not be able to advertise in forms of media that prohibit using the product name.
The registration and enforcement of intellectual property rights is of vital importance to anyone that wishes to protect their own creative ideas and discoveries. Should you need assistance with your intellectual property or merely wish to know more about what rights you have or could have, contact a member of the Lewis Rice Intellectual Property Group.