Many Trademarkology readers will recall that the Supreme Court in June 2017 held that the Patent and Trademark Office could not legally refuse registration of a mark on the ground that it was disparaging. As a result, a mark that the PTO considered a racial slur could be registered. That case reversed years of Trademark Office practice and struck down a longstanding provision of the federal trademark law. The trademark register was now open to offensive racial or ethnic terms and other disses.
But maybe trademarks that disparage people aren’t your thing. Maybe you just want to register a trademark that is more generally considered vulgar or offensive. Scatological terms, perhaps, or vulgar terms for sex acts? Well, great news! In December, the court that oversees the PTO held that registration of those types of terms cannot be refused just because they’re offensive.
The earlier case, Matal v. Tam, involved the mark THE SLANTS, which the applicant used as the name of a music group whose members were of Asian heritage. The PTO refused registration based on a provision in §2(a) of the Lanham Act prohibiting registration of marks that “disparage . . . or bring . . . into contemp[t] or disrepute” persons living or dead, concluding that a substantial portion of Asians would consider the term offensive. The Court of Appeals for the Federal Circuit held that that prohibition violated the First Amendment because it discriminated among trademarks based on the expressive content of the marks and particularly on the viewpoint being expressed. The Supreme Court agreed, noting that “If there is a bedrock principle underlying the First Amendment, it is that the government may not prohibit the expression of an idea simply because society finds the idea itself offensive or disagreeable.”
The December 2017 case, In re: Brunetti, involved an application to register the mark FUCT for use with clothing. The PTO refused registration, finding that the mark comprises “immoral” or “scandalous matter” and is therefore unregistrable. That decision was made before the Tam case was decided in either the Federal Circuit or the Supreme Court, so there was no reason to believe the ground was shifting for offensive trademarks, and it was based on a different part of §2(a) than the one at issue in Tam.
After the decision in the SLANTS case, the outcome in Brunetti seemed pretty obvious, but the government gamely made its arguments. One argument was that because the “immoral or scandalous” prohibition was viewpoint-neutral in that it did not only prohibit registration of marks that said bad things about people as in Tam, it was not covered by the earlier case and also did not violate the First Amendment. The applicant, for his part, did his best to undermine his own credibility by arguing that FUCT would not be seen as vulgar but was a term coined from the words Friends U Can’t Trust – “Wait, what did you think it meant, your honor?”
The court wasn’t buying any of those arguments. It agreed with the PTO that a significant part of the public would find the term vulgar and offensive, so that registration was banned by the “immoral or scandalous” provision. But the court held that registration could not legally be refused for that reason. Because the “immoral or scandalous” prohibition is a content-based restriction on speech, it is only valid if it serves a compelling government interest and is narrowly drawn to serve that interest. It is not. It also is vague, as illustrated by the fact that different examining attorneys at the Trademark Office came to different conclusions about whether terms including BS, COCAINE, TURD, and MILF were so immoral or scandalous as to preclude registration. So the court concluded that the “immoral or scandalous” provision is unconstitutional.
Neither this case nor the SLANTS case probably portends the end of society as we know it. A quick search for perhaps the most obviously offensive racial slur shows that there has been precisely one application to register a mark including the “N-word” since the Supreme Court’s decision, and that application was filed on the very day the decision came down. It may be that business owners recognize that most people are not lining up to buy products bearing that term.
There does seem to be a greater enthusiasm for marks that would potentially have been refused registration as immoral or scandalous. A search for marks incorporating what I will delicately call “the F-word” shows 34 pending applications filed after the Tam decision, about half of them based on a claim of actual use of the term as a mark. (An interesting tidbit in that regard is that about a week after the oral argument at which Mr. Brunetti was claiming that FUCT was a coined term and an acronym, he had filed an application to register the standard F-word for use with clothing. It is not clear what that is an acronym for.) The standard “S-word” is even more popular, with 42 applications. It strikes me as unlikely that any of these will prove to be great trademarks, and most probably never will be registered for other reasons. But who knows – “S-word” happens.
I will leave you with a small gallery of specimens of use for a few of these applications, including the specimen showing Mr. Brunetti’s use of his mark.
Specimen of Use for App. No. 85310960
Specimen of Use for App. No. 87557441