FUCT: Federal Circuit Rules Ban on Immoral and Scandalous Trademarks As Unconstitutional
The US Court of Appeals for the Federal Circuit has ruled that the Lanham Act’s statutory ban on “immoral or scandalous” trademarks violates the First Amendment and is thus unconstitutional. See In re Brunetti, No. 2015-1109, 2017 WL 6391161, at *17 (Fed. Cir. Dec. 15, 2017). The decision comes just months after the US Supreme Court unanimously affirmed the Federal Circuit’s decision in In Re Tam, holding that the ban on “disparaging marks” also unconstitutionally restricted free speech.
The case began when a trademark applicant filed an application to register the mark FUCT in connection with clothing, footwear, accessories, and related goods. The trademark application was refused on the basis that the trademark was immoral and scandalous. The trademark examining attorney reasoned that because FUCT was the past tense version of the word “fuck,” the mark was vulgar, and thus scandalous, and therefore unregistrable. The applicant appealed to the Federal Circuit after the Trademark Trial and Appeal Board affirmed the examining attorney’s refusal to register the mark.
While the Federal Circuit agreed that the mark is in fact vulgar, it ultimately held that the trademark provision restricting the registration of immoral or scandalous marks is an unconstitutional, content-based restriction on speech. Although the government may assist in clearing and processing marks, it does not have the leeway to scrutinize the appropriateness of the content of a trademark, the court reasoned. “[T]he immoral or scandalous provision targets a mark's expressive message, which is separate and distinct from the commercial purpose of a mark as a source identifier[,]” it wrote. In light of its holding, the Court reversed the Board’s holding that the FUCT mark was unregisterable.
Despite the government’s admitted hesitation and discomfort in seeing a proliferation of lewd, crass, or disturbing marks, this case serves as a relevant guidepost for content and brand owners. Even if the general public may find a mark offensive, such a mark is still protected by the First Amendment, and now, potentially even registrable.
Arent Fox’s Fashion Law group will continue to monitor developments in this area. If you have any questions, please contact Anthony V. Lupo, Matthew R. Mills, Danielle W. Bulger, or the Arent Fox professional who usually handles your matters.