Supreme Court Addresses Immoral or Scandalous Trademarks

In 2013, our firm wrote a blog article about the Trademark Trial and Appeal Board’s refusal to register THE SLANTS under 15 U.S.C. § 1052(a) which prohibited the registration of marks which “may disparage…persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…” Five years later, we wrote a follow-up blog post after the Supreme Court struck down this disparagement clause in Matal v. Tam on the grounds that such clause violated the First Amendment – allowing THE SLANTS trademark to proceed to registration.

Immoral or Scandalous Trademarks:

Recently, the Supreme Court took up Iancu v. Brunetti – a case which some leading authorities are calling “Tam 2.0”. The Brunettii case involves another clause in Section 1052(a), namely, the prohibition against registering “immoral” or “scandalous” trademarks and whether such prohibition violates the First Amendment. More specifically, Mr. Brunetti is the owner of the clothing brand “FUCT” for which he has sought a Federal trademark registration.

CNN reports that Mr. Brunetti asserts his “FUCT” brand stands for “FRIENDS U CAN’T TRUST” and was launched in 1990 to “question authority and the assumptions of society.” The problem? As eloquently stated by Deputy Solicitor General Malcolm Stewart, “FUCT” is pronounced in the same way as the “profane past participle form of a well-known word of profanity and perhaps the paradigmatic word of profanity in our language.” In view of this pronunciation, the U.S. PTO denied registration of this mark on the grounds that it was “immoral” or “scandalous” under Section 1052(a).

Unequal Treatment:

In addition to the obvious First Amendment issues raised in light of the Supreme Court’s decision in Matal v. Tam, there is another important issue relating to the discretion of the Trademark Office in deciding which marks are “immoral” or “scandalous” and which are not. As all Trademark Practitioners know, the wide latitude afforded to Trademark Examining Attorneys in the prosecution of trademark applications can be a source of consternation and unequal results. For example, the decisions of one Trademark Examining Attorney are generally not binding on another – meaning that two Trademark Examining Attorneys can reach opposite conclusions regarding an identical or nearly identical issue.

This disparity was placed squarely before the Supreme Court in this case. Barton Beebe and Jeanne Fromer, professors at New York University School of Law, submitted an amicus curiae brief outlining, inter alia, the results of a study they conducted which examined the disparate treatment of various similar applications at the U.S. PTO. More specifically, their brief included an important examination of trademark applications which were simultaneously:

denied registration under Section 1052(a) for being immoral or scandalous; and

denied registration under Section 1052(d) for being confusingly similar to another earlier filed application / pending registration.

Put another way, the U.S. PTO held such trademarks to be “immoral” or “scandalous” and yet “close enough” to another – presumably equally “immoral” or “scandalous” – trademark which had somehow navigated through the U.S. PTO.

Some examples cited by Professors Beebe and Fromer in their brief include:

UN CABRON POR MI PATRON (Serial No. 77060638) in Classes 25 and 32 (which was translated by the U.S. PTO as “a prick or motherfucker for my boss”) was refused registration as being immoral or scandalous.

This application was also held confusingly similar to the recently-registered mark KBRON (Reg. No. 3130447) in Class 25 and CABRON 49 (STYLIZED) (Reg. No. 3202335) in Classes 3, 18 and 25.

SUCK IT! (STYLIZED & DESIGN) (Serial No. 77350732) in Class 25 was refused registration as being immoral or scandalous.

This application was also held confusingly similar to the then-pending, earlier-filed application for SUCKIT. (STYLIZED) in Class 16 (which later registered as Reg. No. 3763768).

MARYJANE COLA (Serial No. 77673405) in Classes 5 and 32was refused registration as being immoral or scandalous.

This application was also held confusingly similar to MARY JANE’S RELAXING SODA (Reg. No. 4100537) in Class 32 and MARY JANE’S SODA (Reg. No. 4100529) in Class 5.

PINCHES TACOS (Serial No. 7751302) in Class 43 (which was translated by the U.S. PTO as “fucking taco stand.”) was refused registration as being immoral or scandalous.

This application was also held confusingly similar to the then-pending, earlier-filed application for PINCHE TAQUERIA (Serial No. 77519564) in Class 43.

According to Professors Beebe and Fromer, such examples illustrate that the U.S. PTO is “systematically inconsistent and arbitrary” in applying the “immoral” or “scandalous” requirements of Section 1052(a).

Our Predictions:

Based on the research above, the “tone” of oral arguments and the Supreme Court’s 2017 decision in Matal v. Tam, it seems likely that the Supreme Court will rule in favor of Mr. Brunettii and allow him to register his “FUCT” trademark.

That being said, commentators have noted that the Supreme Court seemed disturbed by the registration of certain extremely heinous words (such as the “n word”). Indeed, a quick “knock out” search of the U.S. PTO Trademark Electronic Search System database for the “n word” reveals 10 currently pending applications incorporating this offensive term.

Accordingly, our prediction is that the Supreme Court will: (a) strike down the current Section 1052(a) as being unconstitutionally overbroad; while (b) wording the opinion in such a way as to give Congress the ability to pass more narrowly tailored language which could still prohibit some of the most offensive and vulgar terms.

Improper Use of Registration (®) Symbol:

Finally, we observe that Mr. Brunettii’s website includes the use of the registration symbol (i.e., “®”) in connection with his “FUCT” mark as shown below:

While our tongue-in-cheek first thought is that this is an indication of Mr. Brunettii’s confidence that he will prevail at the Supreme Court and secure a registration, we note that the use of the registration symbol without first securing a Federal trademark registration is, itself, grounds for refusing a registration. Indeed, as the Federal Circuit explained in Copelands’ Enterprises, Inc. v. CNV, Inc., 945 F.2d 1563, 1566 (Fed. Cir. 1991):

“The improper use of a registration notice in connection with an unregistered mark, if done with intent to deceive the purchasing public or others in the trade into believing that the mark is registered, is a ground for denying the registration of an otherwise registrable mark.”

Bottom line, Mr. Brunettii should take care to update the logo on his website lest he receive a “Pyrrhic victory” by winning at the Supreme Court but nonetheless having his registration refused for misuse of the registered trademark symbol.

If you or your company have a brand which needs protection, contact us today for a free consultation.