US Supreme Court to Consider Registration of Vulgar Trademarks
The US Patent & Trademark Office (“PTO”) refused to register the mark FUCT for use in connection with clothing based on the obvious similarities with the “F-word,” because 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….”
The Trademark Trial and Appeal Board (“TTAB”) affirmed the PTO’s decision, and the applicant appealed. The Court of Appeals agreed that the FUCT mark is vulgar and therefore scandalous, but reversed the TTAB’s decision that the mark is unregisterable.
The court struck down as unconstitutional the portions of Section 2(a) that ban registration of a trademark that consists of or comprises “immoral” or “scandalous” matter.
Six months before this holding, the US Supreme Court had ruled that the PTO cannot reject trademark applications merely because the trademark being applied for is disparaging, because this constitutes improper viewpoint discrimination.
The appeals court, however, held that whether or not the provision prohibiting registration of scandalous and immoral marks is viewpoint discriminatory, it “impermissibly discriminates based on the content in violation of the First Amendment.”
The US Supreme Court has now agreed to review the appellate court’s decision. According to the petition filed on behalf of the PTO, the question for the Court is whether or not the Lanham Act’s prohibition on the federal registration of “immoral” or “scandalous” marks is unconstitutional under the Free Speech Clause of the First Amendment.
The PTO argues that it is not unconstitutional, because there is no restriction in what can be used as a trademark, only what can be registered as a trademark. In fact, Erik Brunetti used the FUCT mark for nearly 20 years before filing the application at issue.
Apparently not everyone at the PTO has the same opinion about what constitutes immoral and scandalous, though, given that examiners registered FAUQ-YEAH!, WTF WHERE’S THE FOODTRUCK, and ASIAN AF. There are also a number of registered marks that include the words PISS, ASS, BASTARD, SLUT, and BITCH.
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.
This may be changing for hemp and CBD trademarks, however. On December 20, 2018, President Trump signed into law the Agriculture Improvement Act of 2018 (AKA the “Farm Bill”), which legalizes hemp and the hemp-derived CBD oil (cannabidiol).
The Farm Bill does not require that the PTO register these types of marks, though, and it remains to be seen how trademark examiners will respond to applications for hemp and CBD products.
Please feel free to contact us if you have any questions about choosing, registering or enforcing your trademarks.
Photo by Mark Adriane on Unsplash.jpg
