By Ashley Barendse

Associate Attorney with Dunlap, Bennett & Ludwig that primarily provides client counseling on trademark registration issues.

[06.26.19  Leesburg]  In a much-expected decision, the Supreme Court handed down a victory for Erik Brunetti’s trademark application “FUCT” on Monday, June 24.

As we previously covered, Brunetti brought a First Amendment claim against the provision of the Lanham Act that prohibits “[immoral] or scandalous matter.”  Under the First Amendment, limitations on free speech may be upheld if they are viewpoint-neutral (i.e. reasonable bars that do not discriminate against ideas that offend), but will not be upheld if they are viewpoint-based (i.e. applying to marks or ideas that could offend others).  In its holding, the Supreme Court found that this provision is viewpoint-based and that it disfavors some ideas from being federally protected by trademark registration.  As the Court held in its final paragraph, “There are a great many immoral and scandalous ideas in the world (even more than there are swearwords), and the Lanham Act covers them all.  It, therefore, violates the First Amendment.”

Interestingly, the Court also referenced other cases cited in Brunetti’s brief to the Court, including “You Can’t Spell Healthcare without THC” for pain relievers and “Al Qaeda” for clothing, writing that “[t]he Government basically asks us to treat decisions like those described above as PTO examiners’ mistakes.”  This essentially begs the question of whether these marks would have been approved had they been appealed and may signal the Court’s opinion regarding the same as we move forward.

With two similar opinions issued within the past few years (the Slants case and the present case), the landscape of trademark law is constantly shifting.  Both the “disparaging” and the “[immoral] or scandalous” provisions of the Lanham Act have been found unconstitutional, and the attorneys at Dunlap Bennett & Ludwig are ready to help you determine which mark is right for you and how you should proceed with your trademark filing.

Posted in: Intellectual Property, Intellectual Property - Trademarks