“Immoral” or “scandalous” trademarks can now be registered, all thanks to an F-word that is confusingly similar to the popular, profane four-letter-word. In a 6-3 decision, the Supreme Court struck down a near century-old ban on proposed trademarks that are “immoral” or “scandalous” in the pivotal case of Iancu v. Burnetti, No. 18-302, 588 U.S. ___ (2019). Now, following that case, marks using profane language or potential racism can be registered with the United States Patent and Trademark Office (“USPTO”).
This decision comes after fashion designer, Erik Brunetti, was denied a trademark registration for the word “FUCT,” which he intended to use on a clothing line. The Examiner at the USPTO found that the trademark was equivalent to the universally known four-letter F-word, which some consider “vulgar, profane and scandalous.” The Examiner found that this warranted rejection under Lanham Act, Section 2(a), which bans “immoral or scandalous” content. Now that this ban has been deemed unconstitutional, Brunetti can receive a registration for the “FUCT” word mark with the USPTO without pushback regarding morality.
An odd mix of liberal and conservatives Justices joined in Justice Elena Kagan’s majority opinion, including Clarence Thomas, Ruth Bader Ginsberg, Samuel Alito, Neil Gorsuch, and Brett Kavanaugh. To them, this decision was a chance to uphold the protections given through the First Amendment’s safeguard of free speech. Holding this fundamental principle of law as the backbone in their decision, the majority found that the government cannot discriminate against ideas and viewpoints that they may disagree with. As Justice Kagan emphasized, “[T]he Supreme Court, and many Americans are uncomfortable with Brunetti’s trademark. But that is not the question. The question is whether any government gets to impose its views about what is moral and suppress those its finds distasteful.”
Though the majority answered this question in the negative, a few Justices disagreed, particularly Chief Justice John Roberts, Justice Stephen Breyer, and Justice Sonia Sotomayor. Each wrote dissents arguing that the mission of trademark protection is to help consumers identify goods and services for purchase and filter out those they wish to avoid, which by nature requires limitations like the one that the majority opinion eliminated. The dissenting justices also fear the repercussions that might arise, particularly a breakdown in rules governing what terms and phrases can be legally protected as trademarks. According to Chief Justice Roberts, “The First Amendment protects the freedom of speech; it does not require the Government to give aid and comfort to those using obscene, vulgar, and profane modes of expression.”
This is the second decision in about three years to come down from the Supreme Court relating to free speech in intellectual property. In 2017, the Court decided in Matal v. Tam, that a ban on disparaging marks was unconstitutional after an Asian American band was refused a trademark registration because their name, “The Slants,” was found to be too derogatory.
The overhaul of these statutory bans could potentially have rippling effects in other areas outside of intellectual property. Currently, the ruling precedent for radio and television broadcast speech is the 1978 FCC v. Pacifica case involving George Carlin’s “Filthy Words” monologue with the infamous seven words that should never be said on television. There is little doubt that should other cases arise in the near future, the Tam case and the more recent Brunetti case will likely be key factors in the possible overturning of free speech barriers on multiple platforms.
Authors are: Samuel Cooley and Paige Andringa