Thanks to a controversial new ruling handed down by the United States Supreme Court, businesses and brands can now trademark pretty much whatever they want, including marks once considered “immoral” and “scandalous”, as a right of free speech.  The ruling was issued following a lengthy court battle by designer Erik Brunetti, whose desired trademark ‘FUCT’ for his streetwear clothing line was denied by the United States Patent and Trademark Office (USPTO). 
Why Were “Scandalous” and “Offensive” Marks Prohibited in the First Place? 
The Lanham Act is a law that specifies what can be trademarked in the United States. Under the law, the USPTO is prohibited from registering trademarks that consist of matters that are immoral, scandalous, or derogatory.
The first major crack in the foundation of this portion of the law actually came in 2017 when the Supreme Court decided the Matal v. Tam case, which resulted in the reversal of the long-standing practice of the USPTO rejecting marks that were considered “offensive or derogatory” under the Disparagement Clause of the Lanham Act.
The case was brought by Simon Tam, lead singer of a band called The Slants. In 2011, he attempted to trademark his band name, but was refused registration because the U.S. Patent and Trademark Office felt that it violated the prohibition on trademarks that “disparage … or bring … into contemp[t] or disrepute” any “persons, living or dead.”
The Tam case eventually made its way to the Supreme Court, which ruled that the USPTO’s disparagement clause violated Tam’s First Amendment rights under the Free Speech Clause.  As such, the Supreme Court held that even in the case of trademarks, the government is forbidden from suppressing any speech that it does not agree with or simply finds offensive.
Not addressed at the time in the Tam case, however, were similar U.S. Codes still on the books that prohibited trademarks for “immoral” or “scandalous” matters. It was obvious, however, that future cases would soon be brought to challenge these existing portions of the law.
‘FUCT’ Ruling Opens the Door for The Approval of Scandalous and Immoral Marks 
When his trademark for ‘FUCT’ was denied, Erik Brunetti felt that his First Amendment rights were violated.  The successful challenge of the Lanham Act in the Tam case opened the door for Brunetti to bring his fight all the way to the Supreme Court.  Ultimately, a majority of Justices agreed with Brunetti’s position that the denial of his trademark for being “immoral” or “scandalous” was too subjective and was indeed a restriction of his First Amendment rights.
In a 6-3 decision written by Justice Kagan, the Supreme Court struck down the centuries-old law, stating that it violates the Free Speech Clause of the First Amendment because it “disfavors certain ideas.”  Likewise, Kagan wrote that the terms “immoral” or “scandalous” were too sweepingly broad than perhaps limiting the registration of marks that are more narrowly defined as “profane” or “sexually explicit,” for example.
Seeking to Register a “Scandalous” Trademark? Now Is Your Chance.
This new ruling obviously opens the door for business and brands to apply for trademarks that were once considered out of reach because of their immoral or scandalous connotations.  It is yet to be seen if the Court will narrow this ruling down the road if faced with marks using specific profane terms (such as trademarks that include the actual F-Word) or if Congress will step in to craft legislation addressing this issue.
Until then, new opportunities exist for those who once feared that their trademarks would not be approved by the USPTO under the Lanham Act. If you consider yourself one of these individuals and you’d like help with filing a trademark that was previously considered “scandalous” or “immoral,” we invite you to contact our trademark law firm at 888-666-0062 to schedule an initial assessment.  We’ll work to review your proposed marks and set you on a path that offers you the best chance of success when navigating these new and changing aspects of the law.
 
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.