Earlier this month, the Supreme Court hear arguments in a case that will decide the fate of a federal prohibition against granting trademark protection to immoral or scandalous material. The case Iancu v. Brunetti involves a lawsuit initiated by Los Angeles street artist Erik Brunetti who sought to challenge the U.S. Patent and Trademark Office’s decision not to register the trademark for his “FUCT” clothing line. His application had been denied, as deputy solicitor general Malcolm Stewart, who was defending the law, delicately put it, because it “would be perceived by a substantial segment of the public as the equivalent of the profane past participle form of. . . perhaps the paradigmatic word of profanity in our language.”
The U.S. Court of Appeals for the Federal Circuit struck down the century-old ban on granting trademark protection to “scandalous” and “immoral” trademarks reasoning that the ban constituted a First Amendment violation. In its December 15, 2017 decision, the Federal Circuit found that the board was correct in determining that the trademark was immoral or scandalous but that the statute’s “bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech.” The Department of Justice wants the Supreme Court to reverse that decision.
The Supreme Court expressed disdain for the public display of vulgarity but seemed reluctant to use federal trademark law to stop it. The government cannot stop Brunetti from selling his wares, Solicitor General Noel J. Francisco told the court in the government’s petition and the Justice Department conceded at oral argument, also taking time to highlight the fact that Brunetti’s clothing was available even in children’s and infants’ sizes. The Justice Department attempted to frame the issue, however, not as to whether Brunetti could sell the clothing but whether the mark deserves federally registered status.
During oral arguments, several justices suggested that the refusal to register the trademark, a legal protection that would give Brunetti more power to stop copycat designs, seemed arbitrary. Addressing Stewart, Justice Neil Gorsuch said he could list “several” trademarks that have been granted that “have phonetics along the lines you’ve described.” He asked where “the rational line” should be drawn. “How is … a person who wants to get a mark supposed to tell what the PTO is going to do?” Gorsuch asked. “Is it a flip of the coin?”
And although the justices seemed inclined to rule in favor of Brunetti, it doesn’t mean the justices were happy about the prospect of opening the floodgates of registering more vulgar trademarks, including those that expressly include curse words and other vulgarities. Even racial pejoratives, they feared, could emerge with federal protection. For Chief Justice John Roberts, a staunch First Amendment advocate, the choice boiled down to protecting freedom of speech or allowing the “promotion of vulgarity.” If “FUCT” can be a registered trademark, he worried, could the obscenity which it is meant to sound like be next?
A free-speech fight over a trademark registration might sound familiar. Two years ago, when an Asian American band, the Slants, supported by a professional football team, the Washington Redskins, challenged the law against registering “disparaging” trademarks. The court unanimously decided that the neighboring provision concerning a prohibition against “disparaging” trademarks was an unconstitutional infringement on the First Amendment. For more than a century, the trademark office had been told to deny registration of such marks.
Stewart attempted to convince the justices that the outcome of that case—brought by Simon Tam, founder of the Slants, and advantageous to the Washington Redskins professional football team—did not dictate the result in this case.
The “ban on federal registration of scandalous trademarks is not a restriction on speech but a valid condition on participation in a federal program,” Stewart said. Brunetti can call his clothing line whatever he wants, but the government does not have to endorse it by providing trademark registration, he said.
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