Offensive and scandalous trademarks have been a hot topic the past few years. In 2017, we had the landmark case, Matal v. Tam, where the Supreme Court of the United States (SCOTUS) affirmed the judgment of the Court of Appeals for the Federal Circuit that the provisions of the Lanham Act prohibiting the registration of trademarks that “may disparage persons, institutions, beliefs, or national symbols” violated the First Amendment.
In this case, Simon Tam applied for the trademark, THE SLANTS, which is the name for his rock band comprised of three (3) members all of Asian descent. However, the mark was denied registration since the United States Patent and Trademark Office (USPTO) thought the meaning of the term referred to people of Asian descent in a derogatory way, but Tam insisted that the band was reinventing the term in order to fight against Asian stereotypes. It was a long road, but in the end Tam’s persistence paid off and the band officially trademarked their name.
Earlier this year, SCOTUS took up Iancu v. Brunetti. Erik Brunetti, the owner of the 90s streetwear brand FUCT, has been trying to register his brand unsuccessfully for many years. The USPTO refused to register the mark on the grounds that it is “scandalous” under the Disparagement Clause of the Lanham Act. But Brunetti argues that this violates his First Amendment rights to free speech and that without a registered trademark he is not able to stop the excessive amounts of counterfeit goods that he has encountered on eBay, Amazon, and elsewhere for years. Some members of SCOTUS have raised concerns that if FUCT is allowed to register then opportunists may rush in to trademark racial slurs.
Among the differing views, there is one aspect of this case that everyone can agree on and that is how the USPTO is wildly inconsistent in their decisions. The Court reviewed a large list of similar “scandalous” marks, but some were registered while others were not. There was no distinction on why one was able to obtain registration over another. The Court acknowledged that this does not allow someone who applies for a mark to know what their chances are of obtaining a registration. Perhaps change will occur as the final ruling in Brunetti is expected to be handed down in the next few months. For now, the registrability of offensive or “scandalous” marks with the USPTO is a game of chance.
If you or your company are considering filing a mark, scandalous or not, The Myers Law Group can provide you with assistance through the entire process.
UPDATE: On June 24, 2019, the Supreme Court struck down the federal government’s provision that prohibits registration of “immoral” and “scandalous” trademarks on the grounds that it violates the First Amendment. This ruling allows Brunetti to move forward in applying for a federal trademark registration for his brand, FUCT. It is also important to note that Justice Alito said their decision would not prevent Congress from enacting a carefully tailored statute that would prohibit registration of “scandalous” terms that “play no real part in the expression of ideas.” Thus, although SCOTUS has now paved the way for many “scandalous” marks to obtain registration, that could all change with any new legislation from Congress.