Limit in Supreme Court Striking Down Ban On 'Scandalous' Trademarks

In the U.S. Supreme Court's ruling in Iancu v. Brunetti, 139 S. Ct. 2294 (2017), Justice Sonia Sotomayor's dissent cautioned that the decision is likely to pave a path to a "coming rush to register [vulgar, profane, or obscene] trademarks." The reasoning stems from the court's majority finding that a portion of 15 U.S.C. §1052 — which had previously prohibited the registering of "immoral" or "scandalous" trademarks — is unconstitutional.

Practically speaking, however, this "coming rush" will likely not be the case, even via the entertainment industry.

In Brunetti, the Supreme Court ruled that the Lanham Act's prohibitions against the registering of "immoral" or "scandalous" trademarks violate the First Amendment. Writing for the majority, Justice Elena Kagan explained that the statutory immoral or scandalous bar discriminates on the basis of viewpoint, and thus it offends First Amendment doctrine.

The story of artist and entrepreneur Erik Brunetti and his brand FUCT, however, is particularly complex. Brunetti created what would become the clothing brand FUCT in 1991 in Los Angeles. Originally founded as a graphic design company, Brunetti and his team developed and advanced the brand into a street-wear clothing line offering a robust array of apparel. He filed for a federal trademark in 2011. Despite multiple attempts to acquire federal trademark protection of his long-standing brand, the U.S. Patent and Trademark Office (USPTO) refused registration based on the "immoral" and "scandalous" part of the statute.

In her dissent, Justice Sotomayor agreed that the "immoral" restriction in the statute was unconstitutional and that the statute's "scandalous" bar should be preserved through a narrowing and constitutionally permitted viewpoint neutral construction of "vulgar," "lewd," "sexually explicit or profane." Justice Sotomayor noted, however, the majority's opinion now confers the government with significantly less power to refuse certain types of offensive marks. Because of this, she predicted the "coming rush" to register vulgar, profane and obscene trademarks.

While the government does have less capability to reject offensive marks, other requirements exist that could prevent the actual registration of offensive. One such requirement is that the trademark cannot be merely ornamental. Rather, it actually needs to be used as a source identifier, such as use of the name or trademarked image of an entertainer. Often, this issue occurs with "slogans" — offensive or not. For example, a slogan displayed on the front of a t-shirt may be considered merely "ornamental" if most purchasers would not automatically think the slogan identified the actual source of goods.

Accordingly, merely coming up with an offensive phrase, putting it on a t-shirt, and filing for protection would likely not be enough to merit registration without actually having it associated with a source.

In Brunetti, the majority explained that it was previously appropriate in the religious context to register a trademark for the phrase "PRAISE THE LORD" but "BONG HITS 4 JESUS" was considered scandalous and unregistrable. Yet, it is unlikely that "BONG HITS 4 JESUS" (U.S. Serial No. 77/305,946) would be registrable today, even in view of Brunetti. In October 2007, the applicant attempted to register "BONG HITS 4 JESUS" shortly after the June 2007 Supreme Court decision in Morse v. Frederick, 551. U.S. 393 (2007) — a First Amendment case where a high school principal suspended a student after he displayed a banner reading "BONG HiTS [sic] 4 JESUS" across the street from the school. At that time, the USPTO examiner refused registration because it was "scandalous."

While under the Brunetti majority's decision, a USPTO examiner would no longer be able to block registration of "BONG HITS 4 JESUS" because it was a "scandalous" mark, the examiner would still be able to refuse registration because it was merely ornamental. Put differently, in contrast to Brunetti's FUCT brand that had been fostered and developed for more than 25 years, the mark was merely a decorative slogan on a t-shirt and no consumers would attach the slogan in their minds to any particular source of the t-shirt.

The Brunetti opinion also comes only two years after the Supreme Court struck down a sister provision of the same statute in the 2017 case of Matal v. Tam, 137 S. Ct. 1744 (2017), also on First Amendment grounds. In Tam, which involved the name of The Slants, an Asian-American music group, the issue focused on whether the Lanham Act's bar to registering "disparaging" or "derogatory" federal trademarks violated the First Amendment. The high court said it did and many speculated that the decision would lead to an increase in the filing and registering of "disparaging" trademarks.

While there were initially reports of a slight increase in the filing of disparaging marks after Tam, there has been no indication to date that the Tam ruling opened up the floodgates to the registering of a substantial amount of "disparaging" trademarks. Indeed, one of the reasons is the stricture of trademark law that still requires the brand, whether disparaging or not, to identify a source.

So although the Brunetti majority decision stripped away a portion of the Lanham Act that previously prevented the registering of offensive trademarks, the practical considerations and other Lanham Act requirements make it less likely of any "coming rush" of offensive trademark registrations.

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Brian R. Michalek is a partner in the Intellectual Property and Litigation Group in the Chicago, IL, office of Saul, Ewing, Arnstein & Lehr LLP. His practice involves advising clients on various patent and trademark disputes and transactions.