On June 24, 2019, the U.S. Supreme Court rejected the prohibition against registering immoral or scandalous trademarks, holding that the ban against such trademarks violates the First Amendment by discriminating on the basis of viewpoint. In a 6-3 vote, the Justices, in an opinion written by Justice Kagan, explained their decision to invalidate the Lanham Act’s prohibitions on registrations that “[c]onsist of or comprise immoral … scandalous matter” (15 U.S.C. § 1052(a)), stating that “[t]he government may not discriminate against speech based on the ideas or opinions it conveys.”

In so holding, the Court continues to liberalize the terms capable of federal trademark protection, building on its previous decision to allow registration of offensive words. See Matal v. Tam, 137 S. Ct. 1744 (2017). While one can reasonably expect new applications for offensive terms in the coming months, it remains unclear what, if any, limits may ultimately be placed on terms that are beyond the pale, such as highly offensive racist or sexist words. Given previous federal bans on words that were upheld by the Court, such as the Federal Communications Commission’s ban on the “Seven Dirty Words,” it is possible that future legislation will further refine acceptable parameters of terms capable of protection.

The Case is Iancu v. Brunetti, Case No. 18-302, in the U.S. Supreme Court.

In 2011, Erik Brunetti, the founder of a streetwear brand called “FUCT,” applied to register the trademark, but the United States Patent and Trademark Office (“USPTO”) refused registration on the basis that the phonetically profane term was scandalous pursuant to 15 U.S.C. § 1052(a).

 

This article was originally published on AllAboutIPMayer Brown’s blog on relevant developments in the fields of intellectual property and unfair competition law.

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