The Supreme Court Strikes Down Ban on ‘Scandalous’ Trademarks: What That Means for Brands

The U.S. Supreme Court handed down a victory on Monday to the streetwear brand FUCT, striking down a law that banned the federal registration of “immoral” or “scandalous” trademarks.

Free speech advocates praised the ruling, with the ACLU calling it “a victory for the First Amendment.” Erik Brunetti, who launched the label in 1990, applied to register the mark in 2011 with the U.S. Patent and Trademark Office (USPTO), but was denied on the basis that the name was “highly offensive” and “vulgar,” and that it had “decidedly negative sexual connotations.”

Brunetti argued that the name was an acronym for Friends U Can Trust, and further, that the provision banning the registration of scandalous brand names was an infringement on free speech. A federal appeals court agreed, and the Supreme Court affirmed its decision, with Justice Elena Kagan writing in the majority opinion that the restriction is not viewpoint-neutral because it “permits registration of marks that champion society’s sense of rectitude and morality, but not marks that denigrate those concepts.”

While Kagan allowed that the brand name resembled the “past participle form of a well-known word of profanity,” she said the scope of the law was too broad because it “does not draw the line at lewd, sexually explicit, or profane marks,” but rather “covers the universe of immoral or scandalous.”

The ruling follows a similar case in 2017 striking down a provision barring trademarks that “disparage” people or “bring them into contempt or disrepute.” In that case, an Asian-American musician who started a band called The Slants was denied trademark registration on the basis that the name could be construed as disparaging to “persons of Asian descent.” The court found that this bar, too, was viewpoint-based and thus unconstitutional.

Justice Alioto wrote in a concurring opinion in the FUCT case that, “Our decision does not prevent Congress from adopting a more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas.” In the meantime, though, Brunetti and others are free to apply to register “scandalous” brand names, so long as they don’t violate any other trademark restrictions. (Marks, for instance, can’t contain national flags or insignia or resemble another mark to the point where there would be a likelihood of confusion.)

Trademark registration gives rights-holders greater authority to fight counterfeiters, including on marketplaces like Amazon and Ebay where brands often have to flag fakes to have them removed. This can be a costly problem, Brunetti argued, for those who are denied the protection.

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