Being able to trademark names like “FUCT” or “The Slants” is now the law of the land. But that doesn’t necessarily mean fashion brands and retailers will stampede to the U.S. Patent and Trademark office to register potentially offensive names.
In Iancu v. Brunetti, the Supreme Court ruled on Monday that trademark registrations cannot be disqualified for being “immoral or scandalous.” The case involved graphic designer Erik Brunetti’s FUCT clothing line that’s been in business since 1990, and it built on the high court’s 2017 decision in another case which effectively said the patent office can’t block “disparaging” trademarks. In that case, Matal v. Tam, the Asian-American rock band “The Slants” had sought to trademark the name, saying their point was to reclaim the racial slur.
These rulings together open the door to registering a variety of trademarks of four-letter words or sexual terms. But whether brands will leap at the chance isn’t just a matter of the law, but of intertwining cultural and business considerations — what trademarks have always been about, said intellectual property attorneys.
“We’re talking about a really narrow subset of brand owners that are probably looking to do this,” said Joel MacMull, a member of Mandelbaum Salsburg P.C., who had previously represented The Slants’ lead singer Simon Tam before the Supreme Court.
“We’re not going to be walking down a supermarket aisle any time soon with ‘FUCT’ toothpaste next to Crest,” he said.
The cases certainly reflect a shift in the view of the place of legislation in American life. After all, it was common until recent decades for states to restrict shopping on Sundays through so-called religious Blue laws. For that matter, the provisions of the 1946 Lanham Act at issue in the FUCT and The Slants cases were baked in similar notions of morality.
The Supreme Court has been signaling that this governance approach may not always be compatible with First Amendment free-speech protections, attorneys said.
“The First Amendment has always protected people from having their opinions abridged, but this is a new thinking in some ways,” said Alan Behr, who chairs the Fashion Practice at Phillips Nizer LLP. “This ruling is effectively a shield against the use of a jurisprudential approach to morality.”
In the FUCT case, the Supreme Court reiterated the principle that trademark examiners can’t reject a registration for expressing a viewpoint, an idea it had previously cemented in the Tam case.
“In the Tam case, we took the position that the disparagement provision violates the first amendment, meaning that it’s viewpoint discriminatory,” said MacMull, who had represented Tam.
“That the government doesn’t get to decide which statement it’s going to accept and which statement it would reject,” he said. “The notion of the government serving as a censor is not a regime we live under.”
Monday’s FUCT ruling left room for Congress to get involved, and perhaps outline narrower limits than just the broad, subjective category restriction against “immoral or scandalous” trademarks.
In his concurrence with Justice Elena Kagan’s opinion for the court, Justice Samuel Alito wrote that it was up to Congress, if it wants, to devise a “more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas.”
“The ruling certainly suggested that Congress can narrow the statute so that not all obscene or vulgar trademarks can be registered, but until that fix is put in place, the door is open,” said Lucy Wheatley, a partner at McGuireWoods LLP who advises clients on intellectual property issues.
The patent office can still reject applications for trademarks that don’t meet other criteria, such as being too similar to existing applications or marks. But in the end, the question for brands wielding trademarks is also one of building an identity and reputation among their consumers in a way that gives them staying power.
“Even though the court has now allowed for the filing of any type of trademark which could be offensive to some, I don’t think you’re going to see a flood of new brands that would offend the sensibilities of the average American consumer,” said Jason Rosenberg, a partner at Alston & Bird, who works on trademark issues.
“Trademarks embody consumer goodwill, and when you build up brand equity, it’s because of all of the years of customer interactions and product engagement,” he said. “And that takes a lot of work.”