Can One Obtain Registration of Scandalous Marks? The Supreme Court to Decide, Again

In January, the U.S. Supreme Court agreed to preside over a trademark case challenging the initial rejection of the mark “FUCT” for use in connection with the sale of clothing based on the mark being considered “scandalous.” In its original rejection of the mark, the U.S. Trademark Office reasoned that the mark was intended to be a homonym for vulgarity, and as such, violates U.S. trademark law, which prohibits the registration of scandalous marks.

A Special Request for Ruling on Registration of Scandalous Marks

Upon receiving his initial rejection, designer Erik Brunetti appealed the rejection and actually won on appeal.  In an unusual move, however, both Brunetti and the court agreed to ask the Supreme Court to rule on the matter as the Supreme Court has made significant changes to U.S. trademark law with its last few rulings.

Many experts in the field expect the Supreme Court to rule similar to a previous ruling last year and find that the “FUCT” marks are protected free speech.  However, experts note that the Supreme Court may specifically want to decide the case to provide guidance regarding the petitioner’s use and intent behind the mark.

Recent Rulings Allowing for Registration of Scandalous Marks and Disparaging Marks

Last term, the Supreme Court overturned long-standing precepts of trademark law by overturning sections of trademark law that prohibit the registration of “disparaging” trademarks.

In last year’s well-publicized trademark case, Matel v. Tam, an Asian-American band sought registration for the name of their band, “The Slants.”  Noting that “slants” was a term often used in a derogatory manner against Asians, the U.S. Trademark Office refused registration of the mark. Appealing the rejection all the way to the Supreme Court, Tam argued that his use of the mark was intended to reclaim the word and negate the defamatory nature of the term.

Supreme Court Unanimous Decision Finds Trademarks Constitute Private Speech

Finding Tam’s arguments persuasive, the justices overturned long-standing foundations of trademark law in an 8-0 decision, ruling that trademarks constitute private speech instead of government speech, and as such, preventing the registration of such a mark would infringe upon a citizen’s constitutional right to free speech.  By the same token, this ruling has also been used to bolster the Washington Redskins’ efforts in their trademark disputes.

Intent in Trademark Use Could Preclude Finding of Free Speech

Whereas the Matel v. Tam case concerned a petitioner whose intent was to use a controversial mark in a non-derogatory manner, the “FUCT” mark differs significantly because evidence in the case supports the view that its use is intended to be a play on vulgarity.

As such, the Supreme Court would have to decide whether or not such free speech for trademarks can be restricted based on content, intention, and viewpoint.  While Brunetti had originally argued that the mark was meant to be read as an acronym with the letters pronounced separately as “F- U- C – T” like the company IBM, the justices were not persuaded as they pointed out that several of Brunetti’s shirts were clearly playing off the homonym sound of the vulgarity by depicting images of people engaged in sex acts or raising their middle fingers.

As such, it will be interesting to see how the Supreme Court handles the balancing of free speech and the registration of scandalous marks that are intended to be vulgar.

You also may be interested in reading this article “The Washington Redskins, an Asian-American Rock Band, and Trademarks.”

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