Too tasteless to trademark? SCOTUS considers whether vulgar-sounding brand name is protected by First Amendment
In 1990, Los Angeles artist and entrepreneur Erik Brunetti launched a fashion line of T-shirts and other products with a sharply edgy name and logo. The brand quickly helped define “streetwear,” apparel that was popular with skateboarders and counterculture hipsters.
The brand was “fuct,” and it was soon being sold around the world, including in major stores such as Urban Outfitters, and getting attention for items such as a shirt parodying the Ford Motor Co. logo by replacing its four letters with Brunetti’s brand name.
The brand “embodies the archetype of American counterculture” and “established the norm for subversive T-shirt graphics,” Brunetti wrote in an essay in an artsy book about the brand published by Rizzoli New York in 2013. “It has come to represent a sort of paradigm or emblem that professes the relentless questioning of authority.”
It seems unlikely that Brunetti conceived that he and his brand would one day be involved in a case on trademark law before the U.S. Supreme Court, but that is where he will be in April, in Iancu v. Brunetti. The justices will decide whether a provision of the federal Lanham Act that bars the registration of “immoral” or “scandalous” trademarks is facially invalid under the free speech clause of the First Amendment.
“This is one of the cases in which some damage to the structure [of the trademark process] could be done,” says Rebecca Tushnet, a professor of the First Amendment at Harvard Law School who has written widely on trademark and other intellectual property law topics.
A ‘Phonetic Equivalent’
Brunetti waited more than two decades to seek federal trademark registration for his subversive brand. That was in 2011, when the brand was perhaps past its prime but when Brunetti was seeking international trademark protection under the Madrid Protocol, an international trademark treaty that went into effect in the United States in 2003.
The U.S. Patent and Trademark Office, which is not known as a bastion of the counterculture, viewed Brunetti’s brand name as a vulgarity that ran afoul of the so-called scandalous-marks provision.
One opinion by the trademark office concluded that Brunetti’s brand “will be perceived by his targeted market segment as the phonetic equivalent” of the past tense of the most extreme and (perhaps) widely used curse word in English usage.
Brunetti appealed the office’s denial to the U.S. Court of Appeals for the Federal Circuit, the specialized Washington, D.C.-based court that handles patent and trademark matters. In the meantime, the Supreme Court in 2017 decided Matal v. Tam, a challenge to a separate provision of the Lanham Act that bars the registration of “disparaging” trademarks.
In Tam, which was pressed by the leader of an Asian-American rock band that sought to register its name, the Slants, the court ruled 8-0 that the disparagement provision violated the First Amendment, but no rationale commanded a majority of the court.
After the high court’s Tam decision, the Federal Circuit overruled the trademark office in Brunetti’s case. The court agreed with the office that Brunetti’s brand was “scandalous,” but it held the scandalous-marks provision facially invalid.
“There are words and images that we do not wish to be confronted with, not as art, nor in the marketplace,” Judge Kimberly A. Moore wrote for the court. “The First Amendment, however, protects private expression, even private expression which is offensive to a substantial composite of the general public.”
The Trump administration appealed to the Supreme Court, emphasizing that the ruling could lead to the registration of any number of vulgar terms and lewd sexual images.
“The scandalous-marks provision does not prohibit any speech, proscribe any conduct or restrict the use of any trademark,” U.S. Solicitor General Noel J. Francisco told the justices in a brief. “Nor does it restrict a mark owner’s common-law trademark protections. Rather, it simply directs the USPTO to refuse, on a viewpoint-neutral basis, to provide the benefits of federal registration to scandalous marks.”
Shifting View of Scandalous
The case is casting light on the Patent and Trademark Office’s handling of trademark applications under the scandalous-marks provision.
The office asks whether a substantial composite of the general public would find the mark scandalous, which the office generally defines as “shocking to the sense of truth, decency or propriety; disgraceful; offensive; disreputable; … giving offense to the conscience or moral feelings; … or calling out for condemnation.”
The trademark office’s examining attorneys will typically rely on dictionary definitions, news articles and blog posts to learn what the public understands about the mark in question.
The Federal Circuit in Brunetti’s case said the office’s “inconsistent application of the immoral or scandalous provision creates an ‘uncertainty [that] undermines the likelihood that the [provision] has been carefully tailored.’ ”
The appeals court noted that the office had registered the mark “Fugly” for use on clothing but refused registration for the same term for use on alcoholic beverages. The office approved “No BS! Brass” for an entertainment service but rejected “No BS Zone” for internet training.
“The PTO has been inconsistent on the scandalous provision,” says Anne Gilson LaLonde, a Vermont lawyer who is the author of Gilson on Trademarks, a treatise first published by her father, Jerome Gilson, in 1974. “But this provision is not any more vague than the line-drawing that has to be done by the PTO.”
LaLonde was the co-author with her father of a 2011 law journal article cited by the Federal Circuit in the Brunetti case that highlights the trademark office’s handling of numerous trademark applications under the scandalous-marks provision.
The definition of scandalous has changed over time, LaLonde notes. In the 1930s and ’40s, the trademark office often used the provision to refuse to register marks of a religious nature, such as “Madonna” for wine and “Agnus Dei” for metal tabernacle safes.
In more recent decades, seemingly every conceivable sexually explicit and excretory-related word and image have been submitted for registration—and rejected. The trademark office has also rejected terms such as “Cocaine” for a soft drink and “W.B. Wife Beater” for a brand of sleeveless men’s undershirts.
But some applicants have been able to convince the office that their mark refers to a meaning other than a scandalous one. Thus, “Big Pecker Brand” won registration for a line of T-shirts based on the idea that it referred to a bird’s beak. And “Acapulco Gold” was accepted for a suntan lotion despite that term’s association as slang for marijuana.
While most variations of the F-word are rejected, the office did register the mark “FCUK,” which ostensibly stands for French Connection United Kingdom and is widely seen on shirts from the apparel chain.
URBAN DICTIONARY SAYS ...
When it comes to Brunetti’s brand, “there is an emotional component to the case,” LaLonde says.
The trademark office consulted the Urban Dictionary, which defined Brunetti’s term as a past tense of the verb form of the F-word. And the office examined Google images of some of Brunetti’s products and concluded that they displayed themes of “misogyny” and “extreme nihilism.”
Brunetti has asserted that to the extent that his brand name means anything, it means “Friends U Can’t Trust.” The Trademark Trial and Appeal Board said that explanation “stretches credulity.”
Brunetti said in a legal declaration that his brand name does not refer to the F-word, and neither the name nor any product images refer to sexual intercourse.
His brand “does make comments about current political and societal issues, sometimes obvious and sometimes subtly,” he says in the legal document. “But those comments are not scandalous, immoral or vulgar.”
John R. Sommer, an Irvine, California, lawyer who has represented Brunetti throughout his quest for federal registration, says he realizes that the Supreme Court will be deciding on the facial validity of the scandalous-marks provision and not whether Brunetti’s brand should get approval.
“This case is about whether the government decides what kind of speech gets the benefits of registration,” says Sommer, who specializes in trademark issues and serves as general counsel for the streetwear brand Stüssy.
The government is drawing impermissible lines based on viewpoint in its registration decisions under the scandalous provision and not mere subject-matter distinctions, he says. “The scandalous clause cannot be reasonably interpreted as limited to profanity, excretory and sexual references,” as the government contends, Sommer says.
Tushnet says the Supreme Court will have to wrestle with that difficult question under the Lanham Act.
“Even after 70 years,” she says, “we have not come up with a good way to distinguish between subject-matter and viewpoint discrimination.”
This article appeared in the March 2019 issue of the ABA Journal with the headline "Too tasteless to trademark? Court considers whether vulgar-sounding streetwear brand name is protected by First Amendment."