Two major court cases in 2017 asked the question: can the government prohibit the registration of trademarks that may be considered defamatory or offensive?
In 1905, The Trademark Act forbid the registration of scandalous and immoral trademarks. Then, in 1946, section 2(a) of the Lanham Act went further, prohibiting the federal registration of marks that were immoral, scandalous, or disparaging.
But while these limitations may be the law, were they constitutional? Many believed that this bar went beyond the purpose of protecting consumers from confusion about the source and quality of goods and services and instead prohibited free speech. Simon Tam and Erik Brunetti challenged the constitutionality of the disparagement clause and the clause pertaining to immoral or scandalous marks.
Disparaging Words and ‘The Slants’
In the first case which tackled the issue, a band called The Slants tried to register their name as a trademark by filing a trademark application with the USPTO for the first time in March 2010, and the USPTO refused to register the mark. Simon Tam filed a second trademark application for the same mark in November 2011.
‘Slants’ is considered a derogatory term for persons of Asian descent. The band members, led by Simon Shiao Tam, were all Asian-Americans. They believed that by using the derogatory term for their band name they would reclaim the term and drain it of its negative force.
However, USPTO denied the applications for the trademark SLANTS based on the Disparagement Clause in the Lanham Act that prohibited the registration of trademarks that may “disparage . . . or bring . . . into contempt or disrepute” any “persons, living or dead.” 15 U.S.C. §1052(a).
The case, Matal v Tam, ultimately was appealed all the way to the US Supreme Court, which issued an opinion on June 19, 2017 that held the disparagement clause violated the Free Speech Clause of the First Amendment.
Judge Alito wrote, “Speech may not be banned on the ground that it expresses ideas that offend.” This decision impacted a different case before the U.S. Court of Appeals for the Federal Circuit.
Scandalous Words and ‘Fuct’
Erik Brunetti founded the clothing brand, ‘Fuct’ in 1990. He first attempted to register the mark “Fuct” with the USPTO in 1993 but was refused. In 2011, two trademark applications were filed for the mark FUCT for clothing items.
The USPTO refused to register the mark, again under section 2(a) of the Lanham Act, which did not allow the registration of marks that are immoral or scandalous. The examining attorney stated that ‘Fuct’ is the past tense of the verb ‘fuck,’ a vulgar word and was therefore scandalous.
The Brunetti case was appealed all the way to the Federal Circuit Court of Appeals. Brunetti argued the mark should be approved for registration when there is doubt as to the meaning of the mark. In the alternative, he argued that the provision under the Lanham Act that barred immoral or scandalous marks was unconstitutional.
The Federal Circuit requested additional briefings in light of the U.S. Supreme Court’s decision in the Matal v Tam case. Specifically, they asked if there was any reason to treat immoral and scandalous material differently than disparaging material.
The US Court of Appeals for the Federal Circuit issued its opinion on December 15, 2017, finding that the mark FUCT is vulgar and therefore scandalous but ruled that provision on immoral and scandalous marks was an unconstitutional violation of free speech under the First Amendment.
Judge Kimberly Moore wrote for the panel, “We find the use of such marks in commerce discomforting, and are not eager to see a proliferation of such marks in the marketplace. There are, however, a cadre of similarly offensive images and words that have secured copyright registration by the government. There are countless songs, with vulgar lyrics, blasphemous images, scandalous books and paintings, all of which are protected under federal law. No doubt many works registered with the Copyright Office offend a substantial composite of the general public. There are words and images that we do not wish to be confronted with, not as art, nor in the marketplace. The First Amendment, however, protects private expression, even private expression which is offensive to a substantial composite of the general public.” In re: Erik Brunetti, (December 15, 2017)
These two major cases have opened the door for individuals and entities to file trademark applications for marks that are profane, excretory, vulgar, and sexual that are offensive to many individuals. However, they have also protected our vital right to free speech under the First Amendment.
These cases remind me of the cases that involved the comedian George Carlin and his “07 Dirty Words” performance.
In a 2004 NPR interview with Terry Gross, Carlin stated, “These words have no power. We give them this power by refusing to be free and easy with them. We give them power over us. They really, in themselves, have no power. It’s the thrust of the sentence that makes them either good or bad.”