Immoral or Scandalous Marks: Federal Courts Continue to Chip Away at Trademark Rules

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It has long been accepted by the legal community that federal trademark law, specifically the Lanham Act, bars the registration of what are determined to be immoral or scandalous marks. Recently, however, new decisions handed down by the Supreme Court regarding the registration of trademarks have begun to chip away at the Lanham Act and trademark laws that have long guided the U.S. Trademark Office’s handling of trademark registration.

Recent Decision on “THE SLANTS” Mark Claimed to Be Disparaging

For example, earlier this year in June, the Supreme Court partially struck down the law barring registration of material that is considered disparaging in the landmark decision Matal v. Tam. In a 8-0 decision, the Supreme Court affirmed the Federal Circuit Court of Appeals decision to allow an Asian American music group to trademark “The Slants” for their band name, even though the United States Trademark Office has previously rejected registration on the argument that the mark was a racial slur. The Federal Circuit had ruled that the provisions of the Lanham Act that prohibited registration of such trademarks violate the First Amendment.

New Decisions on Marks Claimed to be Immoral or Scandalous Marks

Now again, the Court of Appeals for the Federal Circuit is taking issue with trademark rejections under the Lanham Act. A three-judge panel of the U.S. Court of Appeals for the Federal Circuit has overturned a previously rejected trademark application for the mark “Fuct,” which had been denied on the grounds that it was an immoral or scandalous mark.

In overturning the U.S. Trademark Office’s opinion, the Federal Circuit agreed with the U.S. Trademark Office’s findings and evidence that the mark “Fuct” was indeed vulgar but still ruled that rejection of the registration was in error because such language is protected as free speech under the First Amendment. Specifically, the Federal Circuit noted, similar to the Tam case, that the government (i.e., the U.S. Trademark Office) could not offer nor prove significant utility gained from restricting free speech on such grounds via the trademark registration process.

In the case at hand, clothing company founder, Erik Brunetti, had been trying to trademark “Fuct” for his clothing company since 2011. When he first applied for registration of the mark, the U.S. Trademark Office refused registration on the grounds that the mark could be considered immoral or scandalous. As Brunetti had been using the mark for his company since 1990, he appealed the decision to the Trademark Trial and Appeal Board. The Trademark Trial and Appeal Board affirmed the refusal to register on the same grounds.

Federal Circuit Argues Chilling of Free Speech

When the appeal reached the Federal Circuit, however, the court overturned the ruling, stating that the government could not prove a substantial need or interest in banning offensive trademarks at the cost of chilling free speech. In its opinion, the court noted that trademark registration was hardly the proper forum for the government to attempt to shield the public immoral or scandalous material.

While the government tried to support the refusal to register through other arguments such as arguing that trademark registration constituted government speech or could even be considered a federal subsidy, which would allow the government to institute such restrictions, the Federal Circuit was not persuaded by such arguments and instead warned that such a line of thinking would only further encourage government censorship and call for a widescale reevaluation of a number of government-subsidized projects.

Lastly, the Federal Circuit seemed to take particular issue with the U.S. Trademark Office inconsistent stance on which marks were too immoral or scandalous to register, noting marks such as “FCUK” had already been granted registration.

As the landscape for trademark registration continues to evolve and rapidly change, it would behoove brand owners and companies to consult experienced legal counsel when pursuing trademark registration. Applications that may have been previously abandoned due to a fear of refusal may find new life in today’s legal atmosphere. Consulting experienced trademark counsel can save brand owners time and money while simultaneously protecting important intellectual property assets.

Related content:Supreme Court to Review 1946 Lanham Act

For more information on this topic, please visit our Trademark Registration service page, which is part of our Trademark Practice.

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Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX.  The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution.Additional information about the trademark law firm and its trademark attorneys may be found at www.klemchuk.com.

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