By Mark Litwak
Historically, trademarks that consist of immoral, deceptive, or scandalous material have been denied registration. Under the Lanham Act,[1]the Patent and Trademark Office is required to refuse registration ofmarkscomprised ofimmoralorscandalousmatter.[2]
For example, in Greyhound Corp. v. Both Worlds, Inc., the Trademark Trial and Appeal Board (“TTAB”) held that a mark portraying a defecating dog was immoral and scandalous. The court rejected the argument that the mark was not scandalous because it was a satirical commentary on the silliness of designer labels.Likewise, in In re McGinley, the court deemed as scandalous a mark comprised of “a photograph of a nude man and woman kissing and embracing in a manner appearing to expose the male genitalia,”[3]and in another case the court found the mark, “Only a breast in the mouth is better than a leg in the hand,” for a chicken restaurant to be offensive.[4]And the TTAB has denied the mark “BULLSHIT” for attache cases, handbags, purses, belts, and wallets, finding that the word “bullshit” was scandalous.[5]
However, the Supreme Court has now decided that the scandalous prohibition in trademark law is unconstitutional under the Free Speech Clause of the First Amendment. The case was brought by Erik Brunetti, who founded a clothing line that uses the trademark FUCT. According to Brunetti, the mark (which functions as the clothing’s brand name) is pronounced as four letters, one after the other: F-U-C-T.
Both the trademarkexaminingattorneyandtheTTABdecided thatBrunetti’smark wasvulgar andtherefore could not be registered. The TTAB statedthatthemarkwas“highlyoffensive”and“vulgar,”andthatithad“decidedlynegativesexualconnotations.”
However, the Supreme Court held in Iancu v. Brunetti[6]that the scandalous prohibition in trademark law is unconstitutional under the Free Speech Clause of the First Amendment because it is viewpoint-based. Consequently, the fact that a mark may consist of or comprise “immoral” or “scandalous” matter is no longer a ground on which to refuse registration or cancel a registration.The opinion was written by Justice Kagan and joined by Clarence Thomas, Ruth Bader Ginsburg, Samuel Alito, Neil Gorsuch and Brett Kavanaugh.Consequently, the portions of Trademark Manual of Examining Procedure (TMEP) §1203 that relate specifically to the examination of immoral or scandalous matter no longer apply.
On June 24, 2019 the Supreme Court struck down the prohibition[7]against disparaging trademarks. Marks that disparage, condemn or which falsely suggest a connection with persons living or dead, institutions, beliefs or national symbols have been historically denied. This prohibition was challenged by an Asian-American band known as “The Slants.”[8]The Slants were denied trademark registration by the United States Patent and Trademark Office (“PTO”) based on finding the mark disparaging to “persons of Asian descent.”
The Federal Circuit court agreed with The Slants, finding that that the government regulation at issue amounted to viewpoint discrimination and that the disparagement proscription of Section 1052(a) was unconstitutional.[9]“The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks. It cannot refuse to register marks because it concludes that such marks will be disparaging to others.”[10]
The band claimed that it purposefully selected the racial epithet as its name; in an attempt to take that slur as the name of their group, they will help to “reclaim” the term and “drain its denigrating force.”The group has given its albums names such as “The Yellow Album” and “Slanted Eyes, Slanted Hearts.”
The decision may have far reaching consequences. As Nina Totenberg of NPR reported:”the trademark office has denied registration to a group calling itself “Abort the Republicans,” and another called “Democrats Shouldn’t Breed.” It canceled the registration for the Washington Redskins in 2014 at the behest of some Native Americans who considered the name offensive.
Mark Litwak is a veteran entertainment attorney and producer’s rep based in Los Angeles, California. He is the author of six books including: Dealmaking in the Film and Television Industry, Contracts for the Film and Television Industry, and Risky Business: Financing and Distributing Independent Film. He is an adjunct professor at USC Gould School of Law and the creator of the Entertainment Law Resources (www.marklitwak.com). He can be reached at law2@marklitwak.com
[1]15 U.S.C. §1052.
[2]While the Act does not define scandalous, courts have relied on the dictionary definition which include “shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; giving offense to the conscience or moral feelings.”
[3]In re McGinley, 660 F.2d 481 (1981).
[4]Bromberg, et al. v. Carmel Self Service, Inc., 198 U.S.P.Q. (BNA) 176 (T.T.A.B. 1978).
[5]In re Tinseltown, Inc., 212 U.S.P.Q. (BNA) 863 (T.T.A.B. 1981).
[6]588 U.S. ___ (2019), available athttps://www.supremecourt.gov/opinions/18pdf/18-302_e29g.pdf
[7]15 U.S.C. §1052(a).
[8]Matal v. Tam, 582 U.S. ___ (2017), available athttps://www.supremecourt.gov/opinions/16pdf/15-1293_1o13.pdf
[9]Id.
[10]In re Tam, 808 F.3d 1321 (Fed. Cir. 2015).