Occasionally, I’ll speak with someone that wants to register a trademark featuring a curse word. There are many different ones to choose from, but it seems strange to me that someone would want to build a brand around one. Until this week, trademark registration was not an option in these cases as Section 2(a) of the Lanham Act barred registration of immoral or scandalous trademarks. However, a new decision cascading from the recent Slants case (Matal v. Tam) means that these dirty words can now be registered.
Erik Brunetti filed a trademark application on May 3, 2011. That application was for the name FUCT for “athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps; children’s and infant’s apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments.” He had a couple exchanges with the Trademark Office, and his application received initial approval. But then on July 3, 2012, over a year after filing his application, he received an office action. This office action was the first rejection of FUCT based on the bar against immoral and scandalous trademarks.
Basing its rejection on evidence provided from UrbanDictionary.com (also famously cited in the Slants case), the Trademark Examining Attorney argued that FUCT is a slang version of the past tense of the verb “fuck.” Immoral and scandalous trademarks are one that are considered “shocking to the sense of decency or propriety, giving offense to the conscience or moral feelings, or calling out for condemnation.” Obviously there are many people that would be shocked or offended by this term.
If you haven’t already, please read my summary of Matal v. Tam here. But here is my incredibly short version of that Supreme Court ruling: in that case, Simon Tam’s trademark application for THE SLANTS was rejected because “slants” was a “disparaging” term also barred from registration under Section 2(a) of the Lanham Act. The Supreme Court ruled that such a bar was unconstitutional under the First Amendment. This decision seemed to signal that the immoral and scandalous trademarks bar to registration would also be deemed unconstitutional.
In re Brunetti: Immoral and Scandalous Trademarks
Erik Brunetti eventually hired a trademark attorney and appealed his case to the Trademark Trial and Appeal Board. At the TTAB he lost because FUCT was found to be an immoral or scandalous trademark. So he appealed that decision to the Court of Appeals for the Federal Circuit. Unlike the TTAB, the CAFC can make rulings about the constitutionality of the Lanham Act. The CAFC found that the TTAB was correct that FUCT is an immoral or scandalous trademark. However, they also said that the underlying bar on registrations of those marks is unconstitutional.
The CAFC determined that the immoral and scandalous trademarks bar violates the First Amendment because it is based on the content of the applied-for mark. And such a bar does not withstand either strict or intermediate scrutiny because the government does not have a substantial interest in protecting the public from such content. The Court also pointed out the inconsistencies in enforcing such a restriction. Many other immoral or scandalous trademarks have been allowed registration. And with that, another bar to trademark registration fell.
Many immoral and scandalous trademark applications were waiting for this case to be decided. It would seem that many of these will be registered in the coming months. If you have one that you would like to apply to register, now would be the time to do so. My ears are sensitive, but if you would like assistance with your immoral or scandalous trademarks, please call me at (314) 479-3668, email me at firstname.lastname@example.org, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.