Federal Court Strikes Down Ban on ‘Scandalous’ Trademarks

The game-changing case centered on a clothing brand with a cheek

The saga started with a clothing company called, ahem, “Fuct.” Erik Brunetti, the brand’s founder, sought to obtain a trademark for the name in 2011. But the U.S. Patent and Trademark Office refused his request on the grounds that “Fuct” sounds remarkably like a certain profanity prohibited by the Lanham Act, a trademark registration law enacted by Congress in 1946.

The Trademark Trial and Appeal Board also ruled against Brunetti, citing, among other things, an Urban Dictionary entry that defines “fuct” as the past tense of the f-word. But, as Derek Hawkins of the Washington Post reports, on Friday of last week, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit ruled that barring profane trademarks is an unconstitutional violation of free speech.

In the court’s decision, Circuit Judge Kimberly Moore wrote that “[t]here are words and images that we do not wish to be confronted with, not as art, nor in the marketplace,” reports Susan Decker of Bloomberg. But Moore maintained that the First Amendment “protects private expression, even private expression which is offensive to a substantial composite of the general public.”

Moore also noted that the U.S. Patent and Trademark Office had unevenly applied the immoral and scandalous provision of the Lanham Act. The clothing brand FCUK, for instance, has a registered trademark, as does the exuberantly named sports bar MUTHA EFFIN BINGO.

But the crux of the court’s decision, according to Tim Ryan of Courthouse News, rested on the finding that the government cannot claim a substantial interested in protecting the public from vulgar trademarks. Moore contrasted the case with the government’s interest in prohibiting vulgar language in radio broadcasts, which might be heard by children.

“A trademark is not foisted upon listeners by virtue of its being registered,” Moore writes. “Nor does registration make a scandalous mark more accessible to children.” And although many adults might find the name “Fuct” offensive, as Moore points out "adults have a First Amendment right to view and hear speech that is profane and scandalous."

The judges’ decision was likely swayed by a Supreme Court ruling in June of this year, which struck down the Lanham Act’s disparagement clause. That case was propelled by members of The Slants, an Asian-American band, who had been barred from trademarking the band’s name on the grounds that it disparaged an ethnic group. The Supreme Court, however, found that denying the trademark violated the First Amendment’s Free Speech Clause.

That decision prompted the judges in Brunetti’s case to request additional briefings, and Moore’s opinion often refers to the Supreme Court case as precedent. John Sommer, an attorney for Brunetti, tells Ryan that “the stars were aligned to have this issue addressed.”

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