USPTO May Not Deny Trademark Registration Even if Mark is “Scandalous” or “Immoral”
In Iancu v. Brunetti, June 24, 2019, the U.S. Supreme Court dealt with a clothing manufacturer, who under the guise of seeking to thwart counterfeiters of its product, sought registration before the U.S. Patent & Trademark Office (USPTO) of its logo FUCT on its tee shirts.
The Court affirmed a lower federal court’s ruling that the USPTO may not refuse registration of a mark containing the “F” word or similar four-letter “cuss” words on a “viewpoint basis;” i.e., that such marks are considered “scandalous” or “immoral.” The Court came down strongly on the side of the Constitution’s First Amendment; i.e., Freedom of Speech and Expression outweighs offending the sensibilities of most citizens. All nine justices agreed that the USPTO’s basing its refusal to register this particular mark on the theory that it was “immoral” was not sufficient a rationale when placed against the First Amendment’s rights.
As to the mark being considered “scandalous,” three judges thought the USPTO could justify its refusal to register the mark on this basis alone. In 2017, the Court in Matal v.Tam also struck down the USPTO’s refusal to register a mark because that mark was allegedly “disparaging.”
In this 44 page decision, the Court suggested that it was solely within the province of Congress to redraft/amend the Lanham Act of 1905 to narrow the scope of what was considered out of bounds for trademark registration while not running afoul of the First Amendment. Clearly, “viewpoint bias” as expressed by the USPTO cannot prevail. Characterizing a mark as “lewd, sexually explicit or profane” is clearly insufficient to base a refusal to register a mark.
This decision presents an interesting contrast to the Supreme Court’s 1978 decision in FCC v. Pacifica Foundation. The Court in Pacifica upheld the FCC’s ban on stations even airing “indecent” (as well as “obscene” programming during hours when young children might be in the radio or television audience. The routine banned was George Carlin’s “Filthy Words” (aka “Seven Dirty Words”). The 5-4 decision held that because of the “pervasive nature of broadcasting,” FCC licensees have less First Amendment protection than other forms of communication.
The USPTO could still reject obscene or vulgar marks on other grounds that the mark being reviewed “failed to function as a trademark;” was “merely descriptive” or was “deceptively misdescriptive.” Whether or not a trademark or service mark achieves USPTO registration, the first user in commerce of a distinctive mark may still claim and enforce its exclusive rights to that mark.
Pellegrin’s BriefCase SM/©
Volume 3, Issue #6, July 2019
Author’s Background: ADVERTISING MATERIAL. John Pellegrin, Esq. maintains a robust business law and management consulting practice. Areas of expertise include Intellectual Property/Internet Technology (IP/IT), business transactional and succession planning, communications, representation of clients before various government agencies (FCC, FTC, USPTO, Copyright Office, Small Business Administration, U.S. International Trade Commission, FDA, and EPA). He also has an active wills/trusts/estates practice. John is a graduate of Georgetown University (B.S.B.A. – Management) and Fordham University School of Law (Juris Doctoris). He is admitted to practice before the U.S. Supreme Court, and in Virginia, the District of Columbia, and New York.
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