Supreme Court Case on Registration of “Immoral or Scandalous” Trademarks

August 2019

While trademarks are an essential part of our nation’s commerce and often represent a material portion of a company’s value, legal issues regarding trademarks don’t often reach the United States Supreme Court, and if they do, those cases aren’t normally very interesting to the layperson (as opposed to us trademark attorneys). However, the Supreme Court has recently issued a decision on the issue of whether it is constitutional for trademark law to prohibit the registration of immoral or scandalous trademarks.

Erik Brunetti is an artist and entrepreneur and appears to incorporate provocation into his artistic and commercial pursuits. He founded a clothing line that uses the trademark “FUCT.” Mr. Brunetti asserted that this brand name should be pronounced as four letters, one after the other (F-U-C-T), but as the Court observed, the mark could also easily be described as “the equivalent of [the] past participle form of a well-known word of profanity.” While reviewing Mr. Brunetti’s trademark application, the United States Patent and Trademark Office determined that the mark violated federal law because it consisted of or comprised “immoral…or scandalous matter.” Specifically, the Trademark Trial and Appeal Board determined that FUCT was a “total vulgar” and unregistrable and that the trademark had decidedly negative sexual connotations. The Board also found that Mr. Brunetti’s website and products contain imagery of “extreme nihilism” and “antisocial” behavior and that the mark communicated “misogyny, depravity, [and] violence,” concluding that the trademark was “extremely offensive.” Mr. Brunetti sued the Trademark Office on the grounds that prohibiting the registration of “immoral or scandalous” trademarks violated the First Amendment of the Constitution.

Relying on part on a case decided in 2017 (Matal v. Tam, 582 U.S. _), the court determined that this restriction did, in fact, violate the First Amendment. The theory behind the majority opinion was that the “immoral or scandalous” criterion was viewpoint-based, meaning that the government’s disapproval of “immoral or scandalous” trademarks was based on the offensive nature of the message communicated by the mark. Effectively, the Court found that the application of the “immoral or scandalous” standard permitted the registration of trademarks when their messages accord with societal decency and propriety, but not those marks which are hostile to societal norms. As examples, the Court found that the Trademark Office routinely rejected trademarks which conveyed approval of illegal drug use (while approving trademarks which promoted sobriety), associated religious preferences with commercial products, or which reflected support for terrorist groups, even if the trademark itself was not objectionable on its face (for example, the trademarks AGNUS DEI and MADONNA for commercial products). The Court acknowledged that the opinions associated with these types of trademarks may be objectionable to a large portion of the population of the United States, but that the government’s action in refusing registration of these trademarks serve to censor the ideas expressed by those trademarks.

It is unlikely that the Trademark Office will see an avalanche of applications to register trademarks which are immoral or scandalous, at least in part because it is unlikely that the market will generally accept the use of controversial trademarks. However, by finding that the “immoral or scandalous” bar to trademark registration is unconstitutional, the Supreme Court has removed another impediment to registering trademarks.

FMJ provides a wide array of trademark services, including not only the clearance and registration services described in this article, but also assistance with registration of trademarks outside the United States, enforcement of trademark rights and defense of allegations of trademark infringement, and domain dispute issues.

The above article was written by IP attorney, Pat Shriver. If you have any questions about the content or are interested in learning more about trademarks, Pat can be contacted at pat.shriver@fmjlaw.com or by calling 952-995-9500.