Supreme Court: Businesses can register scandalous trademarks

The Lanham Act, a federal law that prohibits scandalous and immoral trademarks is unconstitutional, according to a ruling by the U.S. Supreme Court.

Registering a trademark has its benefits. Someone who owns an registered trademark can use it in commerce and enforce it. Registering a trademark provides “constructive notice of the registrant’s claim of ownership,” thereby protecting the owner against certain defenses if a patent infringement action arises.

With a registered trademark, the owner has constructive rights to the registered mark throughout the U.S., no matter where they do business.

The case at hand involved Erik Brunetti, who wanted to register a trademark for the brand name FUCT for a clothing line.

Brunetti argued that the mark was an acronym for “Friends U Can’t Trust,” and should be read as separate letters: F-U-C-T. He tried to register the trademark with the U.S. Patent and Trademark Office (USPTO). But the examining attorney and the Trademark Trial and Appeal Board said the mark was “vulgar.” The board also said that the trademark had “decidedly negative sexual connotations.”

The U.S. Supreme Court disagreed. It upheld its own precedent from two years ago, saying that the Lanham Act’s prohibition on the registration of marks deemed “immoral” or “scandalous” essentially amounted to government discrimination against speech based on the “viewpoint” of the speech.

The court explained that federal law favors trademarks that meet standards of moral decency but disfavors trademarks that do not. By allowing the USPTO to choose whether a certain mark will be offensive and then registering only marks it determines are not, the act allows the government to give statutory benefits and protection to some private speech, but not to others, exclusively on the basis of subjective viewpoint, the court found.

As a result, the court said the provision of the act that prohibits registration of “immoral or scandalous” marks violates the First Amendment.

What is the impact of the decision on businesses?

Before the ruling, the use of immoral or scandalous marks in commerce was possible. Now, owners of such marks can seek the additional protections of a registered federal trademark, and it makes the process easier and less expensive.

Keep in mind that applications for profane trademarks can still be rejected on other grounds, and that slogans, terms and phrases that are used to convey ordinary or familiar concepts do not function as trademarks and cannot be registered.

While the ruling might make it seem that there will suddenly be a rush of immoral and scandalous trademarks, it’s too early to tell. There are only so many trademarks that can be registered before the USPTO will start to refuse new ones due to the “likelihood of confusion” with existing registrations.

Regardless, businesses need to carefully evaluate the public relations implications of using a brand name that would be considered immoral or scandalous.

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