28 June 2019

From now on, scandalous trademarks are possible in the US

After a long legal battle with the American Patent and Trademark Office, clothing designer Erik Brunetti has succeeded in trademarking his clothing brand FUCT. The Supreme Court of the United States recently ruled that denying scandalous brands is unconstitutional.

As in Europe, the American trademark law (the Lanham Act) prohibits registration of any trademarks that are contrary to common decency or public order. Section 1052(a) of the Lanham Act states the following:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—
(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute;…

This means that indecent terms, such as terms with a clear sexual connotation, are not likely to qualify for protection under a registered trademark.

Brunetti began his line of clothing FUCT in 1990. FUCT stands for Friends U Can’t Trust and clearly refers to one of the most popular curses. It is not surprising that Brunetti’s trademark applications for FUCT have always been denied in the US. However, the American fashion designer thinks that the provision in the Lanham Act is a violation of the First Amendment, namely the freedom of speech.

Despite the fact that the American Patent and Trademark Office repeatedly rejected Brunetti’s trademark applications over the years, a light appeared at the end of the tunnel in 2017. That year, the Supreme Court ruled in the Tam case that a provision in the Lanham Act, which denies registration to disparaging trademarks, is unconstitutional. Shortly after, a higher court ruled that denying registration to immoral or scandalous matter is unconstitutional. The decision was in Brunetti’s favour.

The American government appealed to a higher court and the case came before the Supreme Court. The American government was of the opinion that the provision does not limit the freedom of speech. After all, in the United States, the right to a trademark arises from use and not from registration. Although registration provides additional benefits, it is not necessary to register your trademark to derive protection from it. This means that registration of a trademark is not mandatory in order to qualify for protection. Hence, the freedom of speech is not limited by the provision.

The Supreme Court did not agree and ruled that the provision is unconstitutional; it was of the opinion that denying registration of scandalous trademarks is discriminating. For all intents and purposes, the provision allows the American Patent and Trademark Office to accept trademarks with a meaning that they deem appropriate and to refuse trademarks with a meaning they deem inappropriate. This is in violation with the First Amendment. The decision was once again in Brunetti’s favour.

From now on, FUCT can be registered as a trademark in the US and Brunetti was finally proven right. Consequently, he can now act more effectively against third parties who violate his trademark.