Shock value branding — brands that catch your eye with their use of profanity or potentially offensive language — can be risky business. From a trademark perspective, though, that is no longer the case.
In the wake of the death of the disparagement clause in Matal v. Tam, the Supreme Court on Monday, June 24th, brought a similar end to a provision of the U.S. Trademark Act that bars registration of “immoral” or “scandalous” marks, ruling that the government’s disapproval of offensive speech cannot justify withholding the government benefit of trademark registration. Iancu v. Brunetti, No. 18-302, 2019 WL 2570622, at *1 (U.S. June 24, 2019).
Artist and fashion designer Erik Brunetti has offered a line of skatewear under the FUCT trademark for years, and applied to register the mark in the U.S. in 2011. Mr. Brunetti maintains that “FUCT” is an acronym for “Friends U Can’t Trust.”
Unfortunately for him, Mr. Brunetti’s application was denied by the USPTO on the grounds that the FUCT trademark sounds identical to the past tense of the “F-word.” Specifically, the USPTO took the position that the FUCT trademark was “lacking in taste,” promoted “anti-social imagery,” and exhibited a theme “of extreme nihilism.”
When he appealed the decision, the Federal Circuit Court of Appeals sided with Mr. Brunetti, deciding that the prohibition on the registration of “immoral” or “scandalous” marks violates the First Amendment guarantee of freedom of speech – even when the speech is offensive.
In oral arguments before the Supreme Court, the government faced pointed questioning from the justices about the USPTO’s history of inconsistently applying the provision. Justice Neil Gorsuch found particularly convincing a chart appended to Brunetti’s brief showing how the USPTO has inconsistently granted and denied registration to marks containing the key words from comedian George Carlin’s “Filthy Words” monologue. For example, the chart shows that “$#*! MY DAD SAYS” was granted registration, but “NO $#!+” was denied.
The Court was not without criticism for Brunetti’s argument that the “immoral” or “scandalous” provision of the Lanham Act is an unconstitutional restriction of free speech, as some of the justices questioned Brunetti about whether profane words are expressing ideas at all. This distinction is particularly important because the Supreme Court’s rationale in Matal v. Tam for striking down the disparagement clause, as well as the Federal Circuit’s rationale in this case, was to permit the expression of offensive ideas. In response, Brunetti’s counsel noted examples of the F-word clearly conveying an expressive message, such as “F*** Cancer” or, the famous phrase from Vietnam War protests, “F*** the draft.”
Oral arguments were humorously complicated by the Supreme Court’s strict adherence to decorum in its courtroom. Over the course of the hour long hearing, neither the justices nor counsel for either party actually spoke the mark at issue aloud. In an impressive display of “lawyer speak,” government counsel Malcolm Stewart referred to the mark as “the equivalent of the past participle form of the paradigmatic profane word in our culture.”
The Supreme Court’s decision, authored by Justice Kagan and joined by Justices Thomas, Ginsburg, Alito, Gorsuch, and Kavanaugh, turned on the determination that the “immoral” or “scandalous” provision of the Lanham Act was unconstitutional viewpoint discrimination:
[T]he Lanham Act allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety. Put the pair of overlapping terms [(“immoral” and “scandalous”)] together and the statute, on its face, distinguishes between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them; those inducing societal nods of approval and those provoking offense and condemnation. The statute favors the former, and disfavors the latter. “Love rules”? “Always be good”? Registration follows. “Hate rules”? “Always be cruel”? Not according to the Lanham Act’s “immoral or scandalous” bar.
Justice Alito wrote a concurring opinion to emphasize that “[v]iewpoint discrimination is poison to a free society” and that any law banning speech deemed by government officials to be immoral or scandalous “can easily be exploited for illegitimate ends.” Chief Justice Roberts, Justice Breyer, and Justice Sotomayor each disagreed with the majority of the Supreme Court and posited that at least the “scandalous” portion of the provision could be narrowly interpreted to be viewpoint-neutral. Justices Breyer and Sotomayor were especially concerned that the majority’s decision goes too far and worried that the USPTO would now be forced to register trademarks that include even particularly egregious racial epithets.
Now that the Supreme Court has invalidated the USPTO’s ability to deny registration of immoral or scandalous trademarks, one thing is certain: the USPTO can expect an influx of applications for marks that seek to capitalize on “shock value” branding.