First Amendment Trumps Trademark Law: Supreme Court Holds FUCT Is OK

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It has been well known that the federal government has long prohibited the registration of trademarks considered to be “immoral” or “scandalous.”  Trademark attorneys have long advised clients to build brands or invest in names that were not edgy enough to be debatable if it came time to register them with the U.S. Trademark Office. In a recent decision, the First Amendment and scandalous trademarks were examined.

Is It Profanity or Clever Art and Free Speech?

In the case at hand, the U.S. Trademark Office rejected an artist’s application to register “FUCT” in connection with his products and merchandise.  Even though the petitioner had argued that the trademark was meant to be read as four letters “F-U-C-T,” the U.S. Trademark Office deemed that the proposed trademark was scandalous, too connected to profanity in sound and would only raise such imagery in the mind of consumers upon initial viewing.  

This all changed, however, earlier this week when the Supreme Court ruled that the long-standing precedent and prohibition of seemingly scandalous marks violated the First Amendment.  

The First Amendment and Scandalous Trademarks

In overturning longstanding trademark law, the Supreme Court held that view pointed-based review and subsequent rejection of trademarks were unconstitutional.  Because the U.S. Trademark Office used subjective reasoning when reviewing the submitted materials for trademark registration (e.g., website, imagery) and deemed them misogynistic, depraved, and violence as reasons for rejecting the trademark application on the basis of immorality or “scandalous trademarks,” the Supreme Court found that the government had engaged in analysis that is prohibited by the First Amendment.

Specifically, in the holding, the Supreme Court noted that the U.S. Trademark Office has long demonstrated considerable bias in its rejections based on immorality.  As examples, the Supreme Court cited that the U.S. Trademark Office had rejected “YOU CAN’T SPELL HEALTHCARE WITHOUT THC” but allowed registration of “SAY NO TO DRUGS—REALITY IS THE BEST TRIP IN LIFE.”  Similarly, the agency allowed registration for “JESUS DIED FOR YOU” but rejected “BONG HITS 4 JESUS.”  In holding for one-side of the same coin, the Supreme Court concluded that the U.S. Trademark Office was demonstrating favoritism for specific viewpoints, which inevitably leads to a chilling effect on ideas that differ in viewpoint from the U.S. Trademark Office. Such objections based on findings of immoral or scandalous trademarks have been affecting First Amendment rights. 

Supreme Court Trend Accepts Offensive, Disparaging, Immoral, or Scandalous Trademarks for First Amendment Protection

This landmark ruling comes only two years after the Supreme Court also overturned longstanding precedent in trademark law regarding offensive or disparaging trademarks.  In that case, the Trademark Office had rejected an Asian-American band’s application to register “THE SLANTS.”  In its reversal, the Supreme Court overturned the U.S. Trademark’s rejection of the application, which had cited that the term was disparaging and offensive even if the petitioner did not intend to use the mark in such manner.  We discussed that case in a previous blog entry that can be read here.

As the Supreme Court continues to overturn longstanding precedents in trademark law, it would behoove trademark counsel and clients alike to revisit their trademark portfolios and determine whether previously jettisoned applications or ideas should be revisited. It’s possible that clever plays on phrases previously found too scandalous for trademark registration may now enjoy protection as a First Amendment right.

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