Did you know that the United States Patent and Trademark Office (USPTO) refuses to register marks that are considered to be disparaging, scandalous or immoral? It has since the beginning of time. But it might be time for a change.
The Supreme Court has agreed to hear the case Iancu v. Brunetti and be forced to make a decision as to whether the USPTO’s ban of his mark “FUCT” is an unconstitutional violation of his 1st Amendment right to free speech.
The case comes from Erik Brunetti, who founded a clothing line under the brand name “FUCT”. And when he did what all smart business owners do to protect their brand name and sought federal trademark registration, the trademark examiner sent him an office action refusing registration of the mark based on violation of 15 U.S.C. 1052(a) of the Lanham Act. The Act states, in relevant part that “no trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it consists of or comprises immoral, deceptive, or scandalous matter”. Brunetti appealed the decision and the United States Court of Appeals for the Federal Circuit found in his favor holding that the Lanham Act's ban on immoral or scandalous matter was unconstitutional. The Appeals Court found that vulgar and immoral content is allowed to be registered by the United States Copyright Office (USCO) and applicants should be granted that same protection by the USPTO or else it is a violation of the individual’s 1st amendment right, which prohibits governmental suppression of free speech. However, the 1st Amendment right is not absolute. The government is permitted to suppress certain types of speech, for example defamation, obscenity, fighting words, and words that present a clear and present danger of causing violence.
Now let me see if I get this right. It’s been a long time since I was in law school and had to analyze a law under the different standards of review to determine how likely a court was to decide. This should be fun and interesting. Ok, here goes: The Courts have fashioned three standards of review when examining claims under the constitution and they are (1) strict scrutiny, (2) intermediate scrutiny, and (3) rational basis scrutiny. Strict scrutiny is applied when suspect classifications are in issue (e.g. race, national origin, religion, and alienage) and also when fundamental rights (such as the 1st Amendment) are in issue. If strict scrutiny applies, the court is tasked with determining whether the government can show that the law or regulation serves a compelling state interest and whether that law is narrowly tailored to serve that interest, meaning it must be the least restrictive means to achieve that goal. Intermediate scrutiny applies when dealing with quasi-suspect classifications (e.g. gender and illegitimacy) and the government must prove that the regulation serves an important government interest and the regulation is substantially related to serving that interest. Rational basis scrutiny covers everything else (outside of suspect and quasi-suspect classes and fundamental rights) and requires the government to prove that the classification is rationally related to a governmental interest.
Here, we have the USPTO, a government entity refusing registration of Brunetti’s mark based on the fact that it is immoral or scandalous, and since Brunetti arguably has a 1st Amendment right to speak how he pleases, the USPTO’s refusal of his mark may infringe upon his 1st Amendment right to call his brand whatever he pleases. As mentioned before, the 1st Amendment right is limited, so the ultimate question the Supreme Court would likely face is whether or not the mark “FUCT” is considered to be obscene and therefore not protected under the 1st Amendment. This is where the real fun begins because the constitution does not exactly define obscene and the courts have wrestled with the definition and classification of obscene materials forever. The best they’ve come up with to date is that obscene matter appeals to the “prurient interests” and then they decide whether or not something is prurient based on the beliefs, standards and perceptions of the local community.
What the “FUCT” (sorry, couldn’t resist) does prurient mean one might wonder? Having or encouraging an excessive interest in sexual matters. Now, we all know some people use the f-word in a sexual manner, but does the simple use of the f-word in that manner encourage an excessive interest in sexual matters? Would there need to be more? I checked out Brunetti’s clothes - no nudity; no bodies in fact; just the mark on some shirts, jackets, etc.; nothing sexual about the clothing type or the images thereon. Not to mention, there are other uses for the f-word. I recited about 4 in my head as I was typing this. And, Brunetti isn’t even attempting to register the f-word, just a word that is phonetically the same. But the USPTO doesn’t care. And they argue that refusal of registration does not prohibit Brunetti from policing his brand and he still may seek recourse under the law in other ways, but we all know federal trademark registration is where it’s at.
It seems pretty clear to me that a 1st Amendment violation is present, but those Supreme Court Justices are pretty crafty, so one never knows what they’ll come back with. It’s kind of interesting that this issue wasn’t presented sooner, but hey Trump is in office, so it’s actually very fitting.
Lerae Funderburg, Esq. is the Managing Attorney at Funderburg Law, LLC, an Atlanta based entertainment law firm. Lerae has almost 10 years of experience in entertainment law in both music law and film law. As an entertainment lawyer and blogger, Lerae keeps her viewers and subscribers up to date with entertainment law news, especially in the areas of music, copyright law and trademark law. If you are local to Atlanta, call and set up a consultation! She would love to hear from you!