Jose Felgueroso
Abogado | Attorney

The United States Trademark Office Cannot Deny the Registration of Immoral or Scandalous Marks

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Versión en español

2020-03-18

Last year, the United States Supreme Court (the "Court") ruled that the refusal of the United States Patent and Trademark Office (USPTO) to register a vulgar trademark violates the free speech guarantee of the United States Constitution, and it declared unconstitutional the statutory provision that prohibited the registration of immoral or scandalous trademarks.

Background

The First Amendment of the United States Constitution prohibits Congress from restricting freedom of speech. The federal trademark statute, known as the Lanham Act, prohibited the registration of immoral or scandalous marks; the USPTO used to apply the prohibition in a unitary manner, without distinguishing between "immoral" and "scandalous."

Erik Brunetti is an artist and entrepreneur who founded a clothing line with the trademark FUCT, which sounds like the simple past and past participle of the verb "fuck." He applied to register the mark in connection with clothing.

In Matal v. Tam (2017), the Court held that a provision that discriminates against certain speech based on the viewpoint of that speech is unconstitutional. Matal v. Tam involved another provision of the Lanham Act that prohibited the registration of trademarks that disparaged any person, living or dead. The applicant in that case had applied to register the mark THE SLANTS in connection with performances by a musical band. The Slants is a musical band composed entirely of Asian-American performers; the lead singer chose that name for the band in an effort to reclaim the term and reduce its derogatory force for persons of Asian descent. The Court concluded that the Lanham Act's prohibition was based on a viewpoint and was therefore unconstitutional.

Procedural History

The trademark examiner refused the registration of Brunetti's mark. Brunetti appealed to the Trademark Trial and Appeal Board (TTAB), which upheld the refusal because it found the mark to be vulgar and highly offensive, and had sexual connotations, and in addition it found that Brunetti's use of the mark reflected extreme nihilism, anti-social behaviour, and misogyny.

Brunetti appealed the TTAB's ruling to the United States Court of Appeals for the Federal Circuit, which held that the Lanham Act's prohibition on the registration of immoral or scandalous marks was an unconstitutional restriction of freedom of speech.

Brunetti appealed to the Court.

The Judgment

Based on dictionary definitions, the Court defined "immoral" as expressive material that is "inconsistent with rectitude, purity, or good morals," and "scandalous" as expressive material that "offends moral feelings and conscience."

As indicated above, a statutory provision that discriminates on the basis of a viewpoint violates freedom of speech. In Matal v. Tam, the Court held that the anti-disparagement provision at issue in that case reflected the federal government's disapproval of the expressive material, and the government must not discriminate on the basis of ideas or opinions, even if they are offensive.

The opinion of the majority of the Court in Brunetti's case concluded that the prohibition on scandalous or immoral marks discriminated on the basis of viewpoint, because trademarks that aligned with conventional moral standards were registered, but trademarks that were hostile to them were denied registration. The Court's majority opinion mentions several examples of a different outcome based on viewpoint regarding drugs, religion, and terrorism. SAY NO TO DRUGS was granted registration; KO KANE was denied registration. JESUS DIED FOR YOU was granted registration; BONG HITS 4 JESUS was denied registration. WAR ON TERROR MEMORIAL was granted registration; BABY AL-QAEDA was denied registration.

In short, the Court held that the Lanham Act's prohibition on the registration of immoral or scandalous marks discriminated against certain viewpoints and therefore violated freedom of speech.

Inconsistent Standards

Several amici curiae briefs filed with the Court highlighted inconsistencies in the application of moral standards regarding similar terms. For example, the USPTO denied registration for FUCT for clothing, but granted registration for FCUK for clothing. The table below contains other examples of inconsistent application of moral standards.

Applied-for Mark	Product or Service	USPTO Decision
DICK SOCK	T-Shirts	Registration Denied
DICK-TEEZ	Clothing	Registration Granted
MADONNA	Wine (in 1938)	Registration Denied
MADONNA	Wine (in 2008)	Registration Granted
WANKER	Clothing	Registration Denied
WANKER	Beer	Registration Granted
PUSSY POWER	Entertainment Services	Registration Denied
PUSSY POWER REVOLUTION	Clothing	Registration Granted

Of the examples in the table above, the most striking one is MADONNA, because it involves the same mark for the same product, but the USPTO reached two contradictory decisions in 1938 and 2008. Thus, the application of the scandalous-immoral standard by the USPTO was inconsistent and unclear, creating legal uncertainty among trademark applicants.

Significance of the Judgment

Although the Court in this case did not address the question of whose speech is involved in a trademark registration, in Matal v. Tam it held that the content of a registered trademark is not the government's speech, but rather the trademark holder's. According to the majority opinion in Matal, if the government were the author of the speech, it would express contradictory views, would endorse a large array of goods and services, and would be "babbling prodigiously and incoherently." Trademarks often have expressive content, and trademark holders have freedom of speech.

The decision in this case could lead to the registration of offensive trademarks. In her individual opinion concurring in part and dissenting in part with the majority, Justice Sotomayor suggested that the Court should have treated "immoral" and "scandalous" separately: "immoral" would cover marks that transgress social norms, and "scandalous" would cover marks that offend because of the manner in which they are expressed; under this approach, the USPTO could still deny the registration of scandalous marks. But the majority of the Court made no distinction between "immoral" and "scandalous," and it remains to be seen whether the USPTO will use that distinction to deny the registration of some offensive trademarks.