Vulgar Trademarks
Erik Brunetti is an artist and entrepreneur who in 1990 co-founded a streetwear clothing line sold under the trademark FUCT. In 2011, faced with a flood of FUCT counterfeit products being sold on the internet, Brunetti filed an application for registration of the mark.
The US Patent & Trademark Office (PTO) refused to register Brunetti’s mark 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 Brunetti appealed.
The Court of Appeals for the Federal Circuit agreed that the FUCT mark is vulgar and therefore scandalous, but reversed the TTAB’s decision that the mark is unregistrable, 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.
This week, in Iancu v. Brunetti, the US Supreme Court agreed with the Court of Appeals, holding that 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, because it discriminates on the basis of viewpoint.
[T]he Lanham Act permits registration of marks that champion society’s sense of rectitude and morality, but not marks that denigrate those concepts…. [T]he Lanham Act allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety. Put the pair of overlapping terms together and the statute, on its face, distinguishes between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them; those inducing societal nods of approval and those provoking offense and condemnation. The statute favors the former, and disfavors the latter. “Love rules”? “Always be good”? Registration follows. “Hate rules”? “Always be cruel”? Not according to the Lanham Act’s “immoral or scandalous” bar.
The Court went on to note that, using those guidelines, the PTO has refused to register marks communicating “immoral” or “scandalous” views about drug use, religion, and terrorism, while approving registration of “marks expressing more accepted views on the same topics.”
In 2017, in Matal v. Tam, the Supreme Court invalidated the Lanham Act’s prohibition of registration of “disparaging” trademarks for the same reasons.
Marijuana and Hemp Products and Services
As of this date, marks for illegal products and services are still not federally registrable. For this reason, cannabis businesses cannot register marks for marijuana products or directly related goods or services with the PTO.
However, in response to the Agriculture Improvement Act of 2018 (AKA the Farm Bill), which legalizes hemp and the hemp-derived CBD oil (cannabidiol), the PTO has updated its guidelines for registering hemp and hemp-derived products.
The PTO says that applications for such products may be approved if they were submitted on or after December 20, 2018 (the date the bill was signed).
In addition to complying with all other trademark statutes and regulations, the applicants must also comply with the regulations contained in the Farm Bill, as well as guidelines established under the Federal Food Drug and Cosmetic Act (FDCA).
The Food and Drug Administration (FDA) has the authority to regulate the use of CBD when CBD is added to foods, beverages, dietary supplements, or pet treats. For now, CBD edible products and dietary supplements will be refused trademark registration on the basis that they violate the FDCA.
Other hemp and hemp-derived products will be considered for registration only if the description of the product or service at issue specifies that the plants and derivatives contain no more than 0.3% THC on a dry-weight basis.
Please feel free to contact us if you have any questions about choosing, registering or enforcing your trademarks.
Photo by Demi Pradolin on Unsplash
