Trademarks and Vulgarity. Good Golly, What in Tarnation is going on?

There was a time when the most vulgar thing we would come across in commerce was Yosemite Sam’s rants about that flea bitten varmint Bugs Bunny. Well, times are-a-changing, perhaps even more than you think. On June 24, 2019 the US Supreme Court struck down part of a federal law blocking trademarks bearing “immoral” or “scandalous” images — including vulgarity and sexual imagery. The Court ruled that Section 2a of the Lanham Act (the law regulating trademarks passed by Congress on July 5, 1946 and signed into law by President Harry Truman) violated the Constitution.

trademark graphicsIn the case of Iancu v. Brunetti, the Court ruled that designer Erik Brunetti can have his proposed trademark for “FUCT” registered with the United States Patent and Trademark Office, (“USPTO”) even though the mark was initially held by the USPTO to be immoral or scandalous given the “context of extreme misogyny, nihilism or violence” in which the mark was presented (I too had to look up those words).

Section 2a of the Lanham Act excludes “immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

According the Court, the problem with section 2a is that it allows the government to use judgement and decide between viewpoints in ruling on a trademark application. The majority pointed out that the USPTO rejected “You can’t spell healthcare without THC” as scandalous to inappropriately glamorize drug abuse, yet it did allow “say no to drugs-reality is the best trip in life”.

The Supreme Court found that because the law “disfavors certain ideas,” it violates the First Amendment.  Justice Kagan, the author of the Court opinion wrote, “[V]iewpoint discrimination is poison to a free society,” and the court must “remain firm” on this issue, during “a time when free speech is under attack.”

This week, upon searching the USPTO trademark registration website for the actual well known four letter word that begins with “F”, 98 trademark applications come up. When searching variation such (similar sounding words but spelled with fuq, fuk, etc. there are over 300 pending applications. Most were preliminary rejected by the USPTO under Section 2a. With this new ruling, these marks potentially have new life. As Justice Sotomayor indicated in her opinion concurring in part and dissenting in part, “the Government will have no statutory basis to refuse 9and thus no choice but to begin registering marks containing the most vulgar, profane or obscene words and images imaginable”.

So what does this mean to you? If you are easily offended, prepare yourself. If you want to register a questionable trademark, that was perhaps a bit on the risqué side perhaps now is the time. As noted by Justice Alito, the Courts decision  “does not prevent Congress from adopting a more carefully focused statute the precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas”.  For many, this ruling may mean very little. But if there is one take away, it is that the attorneys at Pickrel Schaeffer and Ebeling can help you with all your trademark needs. Should you have any questions regarding trademarks contact Gerald McDonald.

AUTHOR: Gerald McDonald