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The Brunetti Case: Immoral and Scandalous Words and Phrases Can Now Be Trademarked

July 11, 2019

In the realm of advertising, trademarks serve as indicators of the source of goods and services. Through a registration procedure, conducted by the U.S. Patent and Trademark Office, an applicant can attempt to register a trademark and thence to utilize the legal mechanisms acquired by having such a registration.

For example, an owner of a registered trademark has the right to bring a federal cause of action for infringement without regard to diversity or amount in controversy, and has the right to request U.S. Customs and Border Protection officials to bar importation of goods bearing infringing trademarks.

Such registered trademarks also provide nationwide constructive use and constructive notice, which cuts off rights of other users for similar marks. Trademark registration owners also have the possibility of achieving incontestable status after five years which bars certain defenses of potential infringement defendants. In addition, the trademark registration owner can use provisions in the trademark laws for treble damages, attorney fees, and various other remedies.

The basis for such trademark procedures is the Lanham Act enacted by the U.S. Congress and signed into law by President Truman on July 5, 1946. Codified at 15 U.S.C. § 1051 et seq., the Lanham Act established a Principal Register for registered trademarks, and prohibited registration of marks which are scandalous, immoral, or disparaging of others.

In particular, the Lanham Act states, in part:

"No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it:

(a) Consists of or comprises 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 ..."

For over 70 years, the U.S.P.T.O. has denied applications to register, as trademarks, certain words and phrases which were deemed by the U.S.P.T.O. to be immoral, scandalous, or disparaging of others. This has changed in the last few years, starting in 2017 with the case of Matal v. Tam, 137 S.Ct. 1744 (2017), and culminating on June 24, 2019 with the case of Iancu v. Brunetti, 139 S.Ct. 2294 (2019).

Matal v. Tam involved a musician Simon Tam pursuing registration of the name "The Slants" for an all Asian-American musical band. Denied registration by the U.S.P.T.O. due to "slant" being a derogatory or disparaging term for Asians and Asian-Americans, Mr. Tam appealed. Eventually the U.S. Supreme Court ruled that the provision in the Lanham Act denying registration to any trademarks seen as disparaging an individual or group, was an unconstitutional restriction of applicants' freedom of speech. But, the prohibition of the Lanham Act against registration of immoral or scandalous marks was unaffected by the Matal v. Tam case, which only dealt with disparaging trademarks.

In Iancu v. Brunetti, the trademark applicant Erik Brunetti applied for registration of "FUCT", and the U.S.P.T.O. rejected the application, stating that "FUCT" was phonetically similar to a common expletive, and so was scandalous. Brunetti then appealed.  On June 24, 2019, in the case of Iancu v. Brunetti, the U.S. Supreme Court ruled that the provision of the Lanham Act, denying registration to any trademarks seen as consisting of immoral or scandalous matter, was also an unconstitutional restriction of applicants' freedom of speech.

According to the high court, the U.S.P.T.O. would need to engage in, and had engaged in, "viewpoint discrimination" to determine if trademark requests fell into the vague definitions of "immoral" or "scandalous." With the U.S.P.T.O. as a government entity, this would be a violation of First Amendment rights, and therefore that portion of the Lanham Act was unconstitutional.

However, some of the justices of the U.S. Supreme Court did express concern that the Brunetti decision would lead to a flood of new trademarks that would be considered crude, and the creation of public spaces that would be repugnant to some people.


Written by Anthony Natoli.  Please note that the above discussion is for general information purposes only. For more information, please contact John H. Choi & Associates LLC at email@jchoilaw.com or 201.580.6600.