Section 2(a) of the federal Trademark Act provides that registration can be denied to any mark that “Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”
Last summer, however, in a case involving the Asian-American rock band The Slants, the US Supreme Court ruled that the Patent & Trademark Office (PTO) cannot reject trademark applications merely because the trademark being applied for is disparaging.
The Court held that, to the extent Section 2(a) allows the rejection of “matter which may disparage…,” it violates the freedom of speech clause of the First Amendment and is, therefore, unconstitutional.
This ruling opened the door to applicants trying to find the boundaries of this holding, and last month, the Court of Appeals for the Federal Circuit addressed an application to register the mark FUCT for use in connection with clothing.
The PTO refused registration based on the obvious similarities with the “F-word.” The Trademark Trial and Appeal Board (TTAB) affirmed the decision, and the applicant appealed.
The Court of Appeals agreed with the trademark examiner that the FUCT mark is vulgar and therefore scandalous. It also rejected the applicant’s claim that the mark is actually not vulgar, but a coined abbreviation for “Friends yoU Can’t Trust.”
It found this argument particularly far-fetched in light of the fact that the applicant used the FUCT mark on products containing sexual imagery (including a t-shirt depicting a group sex scene).
Despite these findings, the Court reversed the TTAB’s decision that the mark is unregisterable, striking down as unconstitutional the portions of Section 2(a) that ban registration of a trademark that consists of or comprises “immoral” or “scandalous” matter.
A search of the PTO database for marks incorporating the “F-word” in some fashion reveals nearly a hundred pending applications. The “S-word is even more popular.” There are, however, no pending applications for the “C-word.”
Interestingly, before this ruling, a number of applications including the terms MILF, WTF, OMFG, STFU and similar abbreviations for vulgar terms slipped by the examiner and were registered.
As of this date, marks for illegal products and services are still not federally registerable. For this reason, cannabis businesses cannot register marks for marijuana products or directly related goods or services with the PTO.
Please feel free to contact us if you have any questions about choosing, registering or enforcing your trademarks.
