The USPTO’s decision to deny Erik Brunetti the right to register the trademark FUCT was reversed by the Federal Circuit.  Why is this news? This cases stretches the frontiers of trademark registration.  If there’s one thing the phrase “scandalous trademark” brings to mind, it’s the fight to change the team name of the Washington Redskins.  While the Fourth Circuit invalidated the decision that vacated the team’s trademarks, the lawsuit was connected to one of America’s great pastimes, football.  Now there’s a new fight on the horizon to define the line between “scandalous” and the First Amendment right to free speech.  On September 7, 2018, the USPTO filed a writ of certiorari with the Supreme Court, asking the Court to review a decision by the Federal Circuit Court of Appeals, that barring the use of the name “FUCT” for athletic apparel infringed on individuals’ right to free speech.  In re Brunetti, 125 USPQ2d 1072 (Fed. Cir. 2017).  Of course, a writ of certiorari does not guarantee the Supreme Court would review this decision, but it describes how the USPTO approaches marks that may be “immoral” or “scandalous.”

Legal support for barring “immoral” and/or “scandalous” marks can be found in Section 2(a) of the Lanham Act.  Whether the mark meets this definition is based on whether the so-called “reasonable” person (based on a broad view of the population) would be offended by the use of the mark.  In its appeal, the government cites to another Supreme Court decision regarding the band name “The Slants,” (Matal v. Tam, 582 U.S. __ (2017)) stating that the “immoral” or “scandalous” bar is not meant to be viewpoint discriminatory. This differs from the ruling in Tam, which pointed to the Disparagement Clause of the Lanham Act as unconstitutional because disparagement, in and of itself, expresses a viewpoint.  As a result, the USPTO is trying to argue that the “immoral and scandalous clause” is viewpoint-neutral, thus allowing the government to bar marks that it considers to be vulgar.  This is especially important because the government, in other arenas, can limit profanity or other “vulgar” speech if that speech is viewpoint-neutral.

This represents a new, ever-changing landscape in trademark law that could affect the USPTO’s ability to bar marks that it considers “immoral” and/or “scandalous” because of its effects on an individual’s right to free speech.  The trademark team at Dunlap, Bennett & Ludwig can ensure that your trademark is handled under the most up-to-date standards to help your trademark application get started on the right footing.

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