On June 24, 2019, the United States Supreme Court, in Iancu v. Brunetti, reviewing the trademark application for “FUCT”, held that the Lanham’s Act’s provision, prohibiting the registration of “immoral[] or scandalous” trademarks, 15 U.S.C. 1052(a)(1), violated the First Amendment to the United States Constitution. This blog has followed the evolving judicial views concerning “disparaging” trademarks, culminating in the Supreme Court’s decision in Matal v. Tam, 137 S. Ct 1744 (June 19,2017) (our coverage can be found here) and the related issue of “immoral or scandalous” trademarks as last addressed by the Federal Circuit in In re Brunetti, 877 F.3d 1330 (Fed. Cir. 2017)(here), and as to which the United States Supreme Court granted certiorari.
Respondent Erik Brunetti founded a clothing line that uses the trademark “FUCT.” In connection with that clothing line, he filed an application to have “FUCT” registered as a United States Trademark. Although Brunetti asserted that the mark was pronounced as four letters, one after the other – that is, F-U-C-T – the Court recognized, as did the examining attorney at the United States Patent and Trademark Office (“USPTO”) and the Trademark Trial and Appeal Board (“TTAB”), that it might be pronounced and read differently – that is, as the past participle of a well-known word of profanity. The USPTO and the TTAB – applying its test of whether a “substantial composite of the general public” would find the mark “shocking to the sense of truth, decency, or propriety”; “giving offense to the conscience or moral feelings”; “calling out for condemnation”; “disgraceful”; “offensive”; “disreputable”; or “vulgar” – denied registration, finding that the mark was “highly offensive” and “vulgar” and that the mark had “decidedly negative sexual connotations.” The TTAB also considered evidence of how Brunetti used the mark in context on Brunetti’s website and products and found that it communicated “misogyny, depravity, [and] violence.”
Brunetti appealed this determination to the Court of Appeals for the Federal Circuit, which found that the prohibition against registering immoral or scandalous marks violated the First Amendment. The Supreme Court affirmed, in an opinion by Justice Kagan, joined by Justices Thomas, Ginsburg, Alito, Gorsuch and Kavanaugh.
The Supreme Court first reviewed its decision in Matal v. Tam, 137 S. Ct. 1744, 582 U.S. ___ (2017), which found unconstitutional the Lanham Act’s bar on the registration of “disparage[ing]” trademarks. The Court noted that although the eight-Justice Court...
