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Immoral and Scandalous Trademarks

  1. Case Background
    In 2011, Mr. Brunetti applied to register the word mark “FUCT”; which he claims is an acronym for the phrase “FRIENDS U CAN’T TRUST”, for use on articles of clothing. During the filing process with the United States Patent and Trademark Office, the examining attorney refused the registration on the basis that “FUCT” was the phonetic equivalent of “Fucked”. Hence, an “immoral or scandalous” mark that could not be registered. Mr. Brunetti appealed the ruling, but was refused registration yet again by the Trademark Trial and Appeal Board (“TTAB”). However, the Federal Circuit reversed TTAB’s decision and certiorari was granted.
  2. History of the Prohibition
    The Trademark Act of 1906 first codified the prohibition against immoral or scandalous matter. In 1946, forty years later, the prohibition was reaffirmed in the 1946 Trademark Act. The same prohibitive language found in the Trademark Act of 1946, later became Section 2(a) of the current trademark law – now 15 U.S.C. §1052(a).
  3. Examples of Rejections based on Section 2(a)
    The United States Patent and Trademark Office (USPTO) has rejected numerous marks using the sole reasoning that the proposed mark is deemed by the office to be “immoral” or “scandalous”. In Greyhound Corp. v. Both Worlds Inc., (TTAB 1988), a graphic design of a dog defecating was held to be scandalous, as applied to polo shirts and T-shirts, given the broad potential audience that may view applicant’s mark in sales establishments and “virtually all public places”. In re Wilcher Corp., (TTAB 1996), the USPTO held scandalous a mark for restaurant and bar services consisting of words DICK HEADS positioned directly underneath caricature of a human head composed primarily of graphic and readily recognizable representation of male genitalia, as it would be considered offensive by a substantial portion of the public.However, before Mr. Brunetti’ reached SCOTUS, legal scholars believed a majority of the Justices would favor Brunetti’s case and would strike out trademark restrictions on “immoral” or “scandalous” material in part due to past inconsistency in the Office’s application of the law, with the Office having past approved trademarks on “FCUK” and “FUBAR”.
  4. Legal Background: Matal vs. Tam (2017)
    Section 2(a) of the Lanham Act holds that a trademark may be refused registration by the USPTO if the subject of the mark consists of “immoral, deceptive, or scandalous matter”. The section had also held that trademarks may be refused if they were deemed to be disparaging i.e. derogatory to the public.In November 2011, Simon Tam, the founder of The Slants, applied to register the mark “THE SLANTS” in connection with live performances by a musical band. The USPTO refused registration on the grounds that the term was disparaging of Asian persons. On appeal, Tam explained that he chose the name ‘The Slants’ to ‘take ownership’ of Asian stereotypes because the band draws inspiration for its lyrics from childhood slurs and mocking nursery rhymes that are popular in the Asian culture. Mr. Tam argued that the § 2(a) prohibition violated the Free Speech Clause.

    The Supreme Court unanimously found the provision to be unconstitutional, stating that the disparagement clause is not “narrowly drawn” to drive out trademarks that support invidious discrimination. Additionally, the Court concluded that the clause reaches any trademark that disparages any person, group, or institution. For this reason, the Supreme Court ruled that banning derogatory trademarks amounts to a bias against derogatory marks, in favor of marks that are complimentary, and is in violation of the first amendment. Justice Alito concluded the opinion with his main concern: “[the ban on derogatory marks] is not an anti-discrimination clause; it is a happy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted.”

  5. Supreme Court of The United States (SCOTUS) Decision: Iancu v. Brunetti
    In the Courts majority opinion, Justice Keagan wrote that, as the Court had found in Matal v. Tam, the USPTO would need to engage in, and has engaged in, “viewpoint discrimination” to determine if a trademark fell in to the vague definitions of “immoral” or “scandalous”. Keagan added that because the USPTO is part of the government, this discrimination would be a violation of First Amendment rights. The Court wrapped up the opinion by suggesting that Congress is empowered, and should consider, creating law that would make a more-narrow determination that would essentially remove the viewpoint discrimination concern for the Office.
  6. Key Takeaways from Iancu v. Brunetti and Metal v Tam
    It is still unclear how the USPTO will handle trademarks applications containing scandalous and/or immoral content. The office should no longer be able to refuse a mark for containing vulgar, or scandalous terms, but your mark still has to satisfy the other trademark filling requirements. Each trademark application is unique and specific, hence whether a trademark application satisfies the trademark requirements differs on a case by case basis.If you are seeking to register these type of marks, or even those less scandalous, reach out to a Florida Trademark Attorney today at 305-374-8303