SCOTUS Hears Offensive Trademark Case
The court first decided the USPTO can’t refuse disparaging trademarks. Scandalous and immoral trademarks could be next

by Julia Cardi

During an hour of oral arguments, both Supreme Court justices and the arguing attorneys before them managed to avoid saying the F-word, in a case over a brand called FUCT.

Iancu v. Brunetti came before the Supreme Court last Monday because the Patent and Trademark Office has refused to register a trademark for the streetwear brand FUCT. The Lanham Act currently prohibits registration of “scandalous” and “immoral trademarks. But now case law does not appear to be on the USPTO’s side.

Two years ago, the Supreme Court struck down a provision of the Lan- ham Act that prohibited disparaging marks in Matal v. Tam. In that case, the USPTO had refused to register “The Slants,” the name of an Asian-American band. The Supreme Court held the provision against disparaging marks put an unconstitutional burden on free speech. In Iancu v. Brunetti, the Federal Circuit reversed the USPTO’s denial of registering the FUCT trademark.

The case’s arguing attorneys went out of their way to avoid saying the brand’s name. Deputy Solicitor General Malcolm Stewart referred to the mark as “the equivalent of the profane past participle of a well-known word of profanity” and a “paradigmatic word of profanity in our language.”

Brian O’Donnell, counsel at Kilpatrick Townsend & Stockton, said the Supreme Court will likely follow its Matal v. Tam precedent and strike down the ban on immoral and scandalous trade- marks as well. But O’Donnell added he was struck by the time spent in oral arguments on whether the tests for “disparaging” and “immoral and scandal- ous” have any significant differences that would merit the court departing from its decision in Matal v. Tam.

Even if the court follows its decision in the Matal case, that may not mean a clean end to the issue. O’Donnell said because context matters for patents and trademarks, the court will probably wrestle with the practical consequences that could result from an end to the prohibition on marks deemed objectionable, and the case could prompt Congress to revise the law governing patents and trademarks.

What if, O’Donnell said, “The Slants” was the name of something other than a music group? What if, for example, someone tried to register a trademark for a name using a slur plus the word “killer” for a firearm?

“There’s no one that’s going to say that should be a government-sanctioned trademark,” he said. “An imminent threat, or fighting words, or some form of illegality that is not allowed under the First Amendment.”

To read this story and other complete articles featured in the April 22, 2019 print edition of Law Week Colorado, copies are available for purchase online.