We have been following the story of the trademark application for FUCT that was originally filed with the USPTO in May 2011, in Class 25 for clothing, all the way to the US Supreme Court. Erik Brunetti, the owner of the trademark FUCT, challenged the constitutionality of the scandalous clause in the Lanham Act which was used by the USPTO to deny the registration of his trademark.
On June 24, the Supreme Court finally made their decision. They held that the Lanham Act’s prohibition on the registration of “immoral” or “scandalous” trademarks violates the First Amendment.
Bottom line? The trademark can now be registered.
What Did The Supreme Court Justices Say?
Justice Elena Kagen, along with Justices Clarence Thomas, Ruth Bader Ginsburg, Samuel Alito, Brett Kavanaugh, and Neil Gorsuch, all voted to strike down the ban. In the majority opinion, Kagen wrote: “The First Amendment does not allow the government to penalize views just because many people, whether rightly or wrongly, see them as offensive.”
One of Mr. Brunetti’s legal team arguments was that the USPTO was inconsistent in how they determined what was scandalous or immoral. The USPTO’s process for reviewing trademark applications was not viewpoint-neutral under the scandalous and immoral clause. They presented a list of similarly offensive trademarks that received registrations despite being considered immoral or scandalous by some members of the public. (These trademarks included “FCUK, FAMOUS FECES, and IRISH BY INTERCOURSE.)
Justices Breyer, Sotomayor, and Roberts issued opinions in which they argued that they should “interpret the word “scandalous” in the present statute to refer only to certain highly “vulgar” or “obscene” modes of expression.” Their main concern revolved around whether or not the Supreme Court’s decision would encourage more trademarks of a scandalous nature. Justice Breyer wrote that he believed more trademarks like FUCT would contribute “to the creation of public spaces that many will find repellant, perhaps on occasion creating the risk of verbal altercations or even physical confrontations.”
What This Means for Trademarks Moving Forward
The inconsistencies regarding which trademark have received registrations and which have not were at the center of this case. The majority opinion argued that issuing trademark registrations with viewpoint-based regulations goes directly against the First Amendment.
In other words, who is to say what is offensive? When pro-Christian viewpoints are used to issue trademarks, is that not discrimination?
Legislators may be asked to clear up these debates moving forward. After all, the FUCT trademark was banned under the Lanham Act, which was written in 1946. Some terms considered “offensive” then are regularly used now. And vice versa.
Moving forward, we might see more brands with scandalous names receive trademark registrations from the USPTO. But what is more important is the possibility of hearing more conversations about how trademarks impact consumers and the social environment where the trademark is used.
Does the presence of a swear word with a trademark registration infringe upon our rights? Where do we draw the line?
As more of these types of cases make their way through the court system, we will continue to follow them and report on what it means for trademark law going forward.