Supreme Court Rolls Back Ban on Immoral and Scandalous Trademarks

| Nov 15, 2019 | Firm News, Trademark & Copyright

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In 2017, The Supreme Court decided a controversial trademark case regarding free speech, Matal v. Tam. The Lanham Act, the Act relating to trademarks, established a prohibition against the registration of trademarks containing “immoral”, “scandalous”, or “disparaging” names and materials. The “disparaging” portion of the statute section was challenged in Matal v. Tam by an Asian American band wishing to trademark the name “The Slants.” Simply because the term might be viewed as racially disparaging, the Court found, does not mean that it is stripped of its First Amendment rights. With the lifting of the ban on “disparaging” trademarks, many were under the impression that the “immoral” and “scandalous” portions of the statute would come under fire next.

Enter FUCT. FUCT is a clothing brand that, when the company name is spoken aloud, sounds exactly as you would expect it does. FUCT applied for a trademark, citing that due to copycat brands, they are losing money. The trademark application was denied and was previously described as having “decidedly negative sexual connotations”, “a total vulgar”, and “highly offensive.” The Supreme Court found that the government cannot discriminate against speech based on the ideas or opinions it conveys, something even the dissenters agreed with. The test used to see if this standard has been violated is whether a trademark application was denied based on a viewpoint it takes. The Supreme Court, in a 6-3 decision, thought that in the “FUCT” case, it had.

The Supreme Court ruled that denying a trademark application based on “immoral” or “scandalous” names or materials is inherently viewpoint based, and therefore those sections of the statute should not be allowed to stand. It was clear that the trademark application of “FUCT” was denied based on a viewpoint it was purported to take. In support of their assertion that trademarks were being denied based on viewpoints, the Court cited a number of examples to that end. The major area of this viewpoint based refusal comes from religion and drugs. Trademarks for “D.A.R.E. to Resist Drugs and Violence”, “Say no to drugs – Reality is the best trip in life”, “Say no to drugs”, “Praise the Lord”, and “Jesus Died For You” were all approved. Trademarks for “Ko Kane”, “Marijuana Cola”, “You Can’t Spell Healthcare Without THC”, and “Bong Hits for Jesus” were all denied.

While the majority argues that these examples, as well as the issues surrounding “FUCT”, clearly constitute a disfavoring of certain viewpoints that is unable to stand given the First Amendment’s Free Speech clause, the dissent has a different view. The dissent points out that having a Freedom of Speech Clause does not mean that the government has to harbor or give aid to those who want to use methods of speech deemed vulgar or obscene. The dissenters go on to say that the allowance of trademarking for these products could create a public space that risks verbal altercations and confrontations. While the dissent pointed out a worthwhile reason for hesitation, it does not appear to hold up under scrutiny. Simply because the “FUCT” trademark is denied does not mean that the product is not already being sold. In fact, part of the reason for the lawsuit in the first place was because of financial losses due to copycats. The existence of “FUCT” products has not appeared to create an atmosphere wrought with verbal and/or physical confrontations. What HAS created an atmosphere wrought with verbal and/or physical confrontations is President Trump’s campaign slogan “Make America Great Again.” Whether it be a Native American man yelling at a bunch of high schoolers clad in Make America Great Again gear in Washington D.C. or a man getting forced out of a Starbucks because of the “Make America Great Again” hat he was wearing, an air of verbal altercations and the potential for physical altercations exists already due to a slogan that was trademarked in 2012. Based on these facts, it seems impossible to know what a registered mark will or won’t do if it is approved, nullifying the points of the dissent.

In addition to the difficulty in predicting whether a trademark will create an atmosphere that will lead to an increased risk of verbal or physical altercations, there is another difficulty in predicting what will happen in the aftermath of this decision. There appear to be two major camps forming. The first, larger camp fears that this will lead to a mad rush to register terms that previously did or would have failed to be approved because of the section of the Lanham Act at issue in the FUCT case. The other camp points out that, especially in the case of common use items, this prediction is wrong. This is because trademarks aren’t allowed to be registered if they fall under common public use. One potential effect is that Congress could potentially write a narrower statute. While Justice Alito, in his concurring opinion, was clear on the fact that Congress could write a narrower statute, the majority itself took no stance one way or the other on future legislation from Congress, potentially leaving the door open for narrower legislation and creating a split among First Amendment experts as to whether Congress could step in.

While there does appear to be some disagreement on what sorts of reactions and effects will stem from this decision, it is not too difficult to imagine that an increase in the number of trademarks filed for objects and phrases that would have previously been denied. Whether that constitutes a mad rush as some have predicted, or whether the response is more muted, the applications the PTO receives coming in the near future should be interesting and full of potentially obscene puns.