Supreme Court to Review the ban on Scandalous Trademark Registrations.

We are only a few days into 2019 and it is already shaping up to be an exciting year in Trademark law as the Supreme Court will be reviewing challenges to the constitutionality of the Lanham Act and several writs of certiorari have been filed requesting that the Supreme Court review decisions which are split in various Federal Court jurisdictions. Once such request which was filed by the United States Patent and Trademark Office (the “Trademark Office”) against Eric Brunetti the owner of the streetwear apparel brand FUCT which was founded in 1990.  On January 4, 2019 the Supreme Court granted the writ of certiorari in Iancu v. Brunetti. Back in 2009, the then owner of FUCT clothing filed for federal trademark registration with the USPTO which was denied “because the applied-for mark consists of or comprises immoral or scandalous matter.  …[t]he applied-for mark FUCT is the phonetic equivalent of “F–KED.” The term “f–k” and therefore “f–ked” has multiple meanings, all of which are defined as vulgar and offensive.”  The denial of the trademark application was based on Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), which provides in part that a trademark shall be refused registration if it “[c]onsists of or comprises immoral * * * or scandalous matter.”

Historically the Trademark Office does not grant federal protection to brands that are considered immoral or scandalous. This doesn’t mean that the brand is not a trademark.  A trademark can still achieve common law protection and the company is free to use the trademark.  Trademarks that are considered immoral or scandalous, may attain common law trademark protection by simply being used in commerce and achieving notoriety, but they cannot attain federal trademark registration protection which grants the right to exclude others from using your trademark.

The owners of the mark FUCT found new hope when in 2017 the Supreme Court of the United States ruled in Matal v. Tam that the Trademark Office could not deny a musical band a trademark registration for the band’s name “The Slants” based on the Lanham Act’s restriction on the registration of  of marks that “disparage” under Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a) as it violated the Free Speech Clause of the First Amendment.  In light of the US Supreme Court’s ruling, Brunetti reapplied for the registration of the FUCT mark for several goods and services and is now awaiting the court’s ruling on whether section 1052(a)’s prohibition on the federal registration of “immoral” or “scandalous” marks is facially invalid under the Free Speech Clause of the First Amendment.  It will be interesting to read the Supreme Court’s decision on this case and see whether the Trademark Office will be compelled to issue registrations to marks that are considered scandalous or immoral based on the First Amendment Right of Free Speech.

Interesting to note that several unrelated parties have filed for federal trademark registration for the mark FUCT as early as 1993 for a variety of goods and services which include clothing, beer and liquor, and global computer information services to name a few.  If these companies are using their trademarks in commerce, they will still take precedent over the registered trademark as they were “first in use” and are granted protection under common law.  Which brings to mind the question of whether, if granted, will the mark FUCT be challenged by brands using currently using the mark?  In any event, we are eagerly awaiting the outcome of the Court’s ruling.