Scandalous Trademark Update

Scandalous Trademark Update

2017 has been a year of big changes for the trademark world. The doors preventing scandalous and offensive marks from gaining registration have been torn off their hinges and no longer stand as a barrier to registration. As a result of two marks “The Slants” and “FUCT” trademark law has drastically changed.

On December 15, 2017, the Court of Appeals for the Federal Circuit made a decision regarding the registration of scandalous and immoral marks that was long awaited, but the outcome of which was not by any means surprising. In the case of In Re Brunetti, the Court held that while the Board did not err in finding the mark scandalous or immoral under 15 U.S.C. § 1052(a) the Court did conclude, as the Supreme Court similarly did in Matal v. Tam, that the USPTO’s bar on registering scandalous and immoral marks is unconstitutional as a restriction of free speech.1

In the case of In Re Brunetti, Mr. Brunetti, who owns a clothing brand called “FUCT” attempted to register the mark in 2011 for articles of clothing.2 The mark was originally denied by the Trademark Office on grounds that it was scandalous and therefore unable to be registered according to  § 1052(a).3 After initial denial of the mark, Mr. Brunetti, appealed the decision to the Board, who also denied the mark registration on the same conclusion that the mark was scandalous.4  Mr. Brunetti, once again appealed the decision to the Federal Circuit.

At the same time the Federal Circuit was considering In Re Brunetti the Supreme Court was also hearing the case of Matal v. Tam. In Re Brunetti was stayed pending the decision of Matal v. Tam and once the decision came out the Federal Circuit required the parties in In Re Brunetti to provide additional briefs based on the Supreme Court’s holding. As discussed in a previous blog, in Matal v. Tam, an all-Asian American band named “The Slants” attempted to registered its name with the Trademark Office, but was denied because the examiner found the mark to be disparaging a substantial composite of persons of Asian descent.5 The case made its way all the way to the U.S. Supreme Court where, on June 19th, 2017, in a highly anticipated outcome, the Court unanimously held that the provisions of the Lanham Act prohibiting the registration of marks that disparage persons, institutions, beliefs, or national symbols violated the First Amendment.6

Given the outcome of Matal v. Tam, the Federal Circuit’s decision in In Re Brunetti, was not surprising. While the Federal Circuit agreed with the government that the mark “FUCT” is scandalous, it disagreed with the government’s argument that § 1052(a) did not chill free speech and that trademark registration was government speech.7 Just like in Matal v. Tam, the Federal Circuit in this case determined that trademark registration was not government speech and that § 1052(a) of the Lanham Act chilled free speech.8 The Federal Circuit further analyzed that “there are countless songs with vulgar lyrics, blasphemous images, scandalous books and paintings, all which are protected under federal law” and “[n]o doubt many works registered with the Copyright Office [that] offend a substantial composite of the general public.”9 However, the First Amendment protects private expression even if it is found offensive to another, therefore, the Trademark Office does not have the authority to deny a mark on grounds of immorality.10

After the decisions in Matal v. Tam and In Re Brunetti the Trademark Office may no longer deny a mark because it is deemed scandalous or offensive. These decisions were anxiously awaited by the trademark world in hopes they would reduce the confusion that has constantly plagued it regarding what is or is not scandalous or offensive according to the Trademark Office.11 The Trademark Office has historically demonstrated inconsistency with what it does or does not allow through its doors, but now the outcome of these cases should help provide some consistency with trademark registration and help those applying for trademark registration to better understand their chances of receiving an allowance.

ARC IP Law is well versed in all areas of trademark law including both domestic and international trademark law.

Danna Cotman is the found of ARC IP Law and has a background in Fashion Design, a Master’s in Business Administration, and has years of experience registering, enforcing, and protecting trademarks.