SCOTUS Invalidates Scandalous Restrictions on Trademarks

Attorney Tal Grinblat

Tal Grinblat | Shareholder

June 25, 2019

In a long-awaited decision, the U.S. Supreme Court invalidated a restriction on registering trademarks deemed “scandalous” or “immoral”. In the Brunetti case, the U.S. Supreme Court was asked whether the provision of the Trademark Act restricting registration of “scandalous” or “immoral” marks violated the First Amendment. It held that it did.

Some background: Eric Brunetti, an artist and entrepreneur, is the owner of a high-profile clothing line best known for its four-letter brand FUCT. Mr. Brunetti claimed these words stood for “Friends U Can’t Trust”. But to many, these four letters read and meant something different.

Mr. Brunetti first applied to register the FUCT mark in 1993 claiming first use since 1990. His application was denied. He tried again in 2011. However, once again the Trademark Office refused to register his mark claiming it was immoral or scandalous. Citing the In Re Mavety case, the Examiner asserted he must refuse the mark if it was considered “scandalous,” defined as shocking to the sense of decency or propriety, giving offense to the conscience or moral feelings, or calling out for condemnation.

The Examiner asserted that based on dictionary definitions and other evidence the word is a past tense for the word F*CK and registration was refused.

Brunetti then appealed to the Trademark Trial and Appeal Board where the refusal was upheld claiming the word was highly offensive and vulgar and that it had “decidedly negative sexual connotations”. Mr. Brunetti appealed again, this time to the Federal Circuit where the Court reversed the Board holding that the “Scandalous or immoral” refusal violated the First Amendment. The Justice Department then appealed to the U.S. Supreme Court.

In assessing the claim, Justice Elena Kagan, speaking for the court reminisced about the Supreme Court’s holding only two terms ago which invalidated a provision of the Trademark Act that prohibited “disparaging” marks. In the Matal v. Tam case, the Supreme Court found that the refusal to register an Asian band’s moniker The Slants similarly violated the First Amendment because it was viewpoint based.

Similarly in the Brunetti case, the Court found that the “scandalous” or “immoral” clause violated the First Amendment because it was viewpoint based — “allowing registrations for marks whose message is in accord with, but not when their messages defy society’s sense of decency or propriety”. In explaining its rationale, Justice Kagan provided the following examples of marks which were allowed to register: “D.A.R.E to Resist Drugs and Violence,” “Say No to Drugs- Reality is the Best Trip In Life,” and “Jesus Died for You.” 

On the other hand, the Trademark Office refused to register the following: “You Can’t Spell Healthcare for THC” for pain relief meds, “KO Kane” for beverages, and “Bong Hits 4 Jesus”, among others. This demonstrated the Trademark Office did not enforce the “scandalous” or “immoral” prohibition in a viewpoint-neutral manner and invalidated the prohibition.

The Brunetti and Tam cases now provide an opportunity for applicants to file and register edgier marks, thereby putting them on the same par as other trademarks.

Tal Grinblat is the Chair of our Intellectual Property Practice Group, and a California Bar Certified Specialist in Franchise & Distribution Law.

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