On December 15, 2017, the United States Court of Appeals for the Federal Circuit passed down the decision in In Re: Erik Brunetti, one that will permit the trademark registration of swear words. In order to understand this decision and its consequences, here’s a quick primer on trademark law.
Trademark Law
In the United States, trademarks are governed by a law called the Lanham Act. One provision of the Act, 15 U.S.C. 1052 (a), contains the immoral and scandalous clause. This clause prohibits the registration of a trademark that “[c]onsists of or comprises immoral . . . or scandalous matter.” Basically, anything that’s vulgar (like curse words) could not previously have been registered.
Facts of Case
Mr. Brunetti owns the clothing brand “fuct,” which he founded in 1990. In 2011, two individuals filed an intent to-use application for the mark FUCT for various items of apparel. The original applicants assigned the application to Brunetti, who amended it to allege use of the mark. The examining attorney at the United States Patent and Trademark Office refused to register the mark under § 2(a) of the Lanham Act, finding it comprised immoral or scandalous matter. The examining attorney reasoned that FUCT is the past tense of the verb “fuck,” a vulgar word, and was therefore scandalous.
Brunetti appealed the decision to the Trademark Board and ultimately the case was heard by the Federal Circuit. In his legal brief, Brunetti argued that the term FUCT was not vulgar under the Lanham Act and that the the immoral and scandalous clause was unconstitutional.
Federal Circuit Holding
The Federal Circuit held that, although the term FUCT was vulgar, Section 2(a)’s bar on registering immoral or scandalous marks was an unconstitutional restriction of free speech. This was especially in light of the recent Supreme Court decision in Matal v. Tam, which removed the ban against the trademark registration of disparaging words (like racial slurs).
Thus, the Federal Circuit reversed the Board’s holding that Mr. Brunetti’s mark was unregistrable.
Impact of Decision
Two immediate effects are that 1) the immoral and scandalous clause is no longer valid law and 2) Brunetti will be able to register his mark. The ultimate effect? A new dawn has come in the trademark world. You’ll now see trademark registrations containing swear words.
You can find a link to the Federal Circuit’s decision here. For more information about trademark law, read these blog posts about the Supreme Court’s decision in Matal v. Tam and the intent-to-use trademark application featuring Rihanna’s Fenty Beauty makeup line, or contact us here.
