Federal Limit on Vulgar Trademarks Thrown Out by High Court (1)

The U.S. Supreme Court said owners of vulgar and lewd product names can get federal trademark protection, ruling that a century-old restriction on those rights violates the constitutional free-speech guarantee.

Siding Monday with the creator of a clothing line known as “FUCT,” the justices threw out a federal law that banned the inclusion of “scandalous” and “immoral” trademarks on a government registry that provides nationwide legal benefits.

The decision could extend beyond trademarks, intellectual property attorney Alan Behr of Phillips Nizer LLP said. Implications could extend to “awkward and deeply suspect attempts” to limit or control hate speech at state and private universities.

“If elements of that kind of speech can now be registered as trademarks for commercial products, any attempt to determine what is hate speech in a political or social context and then to employ governmental instrumentalities to limit it would now appear to be impermissible,” Behr said in an email.

Writing for six justices, Justice Elena Kagan said the ban unconstitutionally discriminated on the basis of viewpoint. She said the U.S. trademark office had rejected applications for “Agnus Dei,” or Lamb of God, for a safe, and “Madonna” for wine, on the grounds they would offend most Christians. The office approved “Praise the Lord” for a game and “Jesus Died for You” on clothing.

Kagan said officials had refused to protect trademarks praising al-Qaeda but allowed one that said, “War on Terror Memorial.“

“Of course, all these decisions are understandable. The rejected marks express opinions that are, at the least, offensive to many Americans,” Kagan said. But “a law disfavoring ideas that offend discriminates based on viewpoint, in violation of the First Amendment,“ she said.

The Trump administration defended the ban, saying the provision didn’t curb private expression. The government argued that artist and designer Erik Brunetti, who owns the FUCT clothing line, is free to use the label but doesn’t have a right to have it on the federal registry.

Federal registration gives trademark owners protections on top of the rights they already have under state law. Registration can confer exclusive rights in parts of the country where no one was already using the name or image, help owners win lawsuits, and put would-be competitors on notice that a trademark is legally protected.

‘Aid and Comfort’

Chief Justice John Roberts and Justices Stephen Breyer and Sonia Sotomayor issued partial dissents, all saying the court should have narrowed the part of the law barring “scandalous” trademark registration so that it didn’t discriminate on the basis of viewpoint.

“The First Amendment protects the freedom of speech; it does not require the government to give aid and comfort to those using obscene, vulgar, and profane modes of expression,” Roberts wrote.

Sotomayor said the federal trademark office now “will have no statutory basis to refuse (and thus no choice but to begin) registering marks containing the most vulgar, profane, or obscene words and images imaginable.“

There may be a spike of intent-to-use trademark applications once refused based on vulgarity, according to Fara Sunderji of Dorsey & Whitney LLP. But she said registered trademarks still have to be used in commerce, and the market won’t necessarily change substantially.

“Businesses have always been free to use vulgar or obscene words on their products because the Lanham Act could not stop that,” Sunderji said in an email. “Thus, it is unlikely that the public will see any real change in the use of immoral or scandalous trademarks in the marketplace.”

Doug Mirell, an intellectual property and First Amendment attorney at Greenberg Glusker added that brand owners would be mindful of offending consumers. He also said that smaller brands may find that with the taboo gone, vulgar marks may no longer be “sufficiently edgy.”

The U.S. trademark office suspended consideration of vulgar and lewd marks during the court fight. Among those on hold were applications by the all-women music groups Pussy Riot and Thunderpussy over their band names. Miramax LLC is awaiting word on its bid to register “bad mother f---er,” without the hyphens, for use on Pulp Fiction-themed goods.

The decision upheld a U.S. Court of Appeals for the Federal Circuit tuling that said the law was unconstitutional.

The case was a follow-up to a 2017 Supreme Court ruling that threw out a similar ban on disparaging trademarks. Although Matal v. Tam was unanimous, the justices splintered in their reasoning, leaving the exact implications unclear.

Critics of the vulgarity ban said it couldn’t be applied consistently. The U.S. Patent and Trademark Office rejected the “FUCT” application, but separately allowed registration of “fcuk,” “wtf is up with my love life?!” and “fword.”

Intellectual property attorney Marsha Gentner of Dykema Gossett PLLC said she expects the PTO to pursue legislation to at least bar vulgar marks. She noted that Sotomayor’s dissent in particular raised the issue of racial epithets. But she acknowledged that Tam left it questionable whether that could survive a First Amendment challenge, while noting Sotomayor had cited a Coast Guard regulation on ship names.

The case is Iancu v. Brunetti, U.S., No. 18-302, 6/24/19

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