In 2011, Erik Brunetti, the founder of a streetwear brand called “FUCT,” applied to register the trademark, but the United States Patent and Trademark Office (“USPTO”) refused registration on the basis that the phonetically profane term was scandalous pursuant to 15 U.S.C. § 1052(a).

On June 24, 2019, the U.S. Supreme Court rejected the prohibition against registering immoral or scandalous trademarks, holding that the ban against such trademarks violates the First Amendment by discriminating on the basis of viewpoint. In a 6-3 vote, the Justices, in an opinion written by Justice Kagan, explained their decision to invalidate the Lanham Act’s prohibitions on registrations that “[c]onsist of or comprise immoral … scandalous matter” (15 U.S.C. § 1052(a)), stating that “[t]he government may not discriminate against speech based on the ideas or opinions it conveys.”

In so holding, the Court continues to liberalize the terms capable of federal trademark protection, building on its previous decision to allow registration of offensive words. See Matal v. Tam, 137 S. Ct. 1744 (2017). While one can reasonably expect new applications for offensive terms in the coming months, it remains unclear what, if any, limits may ultimately be placed on terms that are beyond the pale, such as highly offensive racist or sexist words. Given previous federal bans on words that were upheld by the Court, such as the Federal Communications Commission’s ban on the “Seven Dirty Words,” it is possible that future legislation will further refine acceptable parameters of terms capable of protection.

Applicants considering applying for a trademark or that have been refused trademark registration by the USPTO on the basis that the mark was considered by the examiner to be immoral or scandalous are invited to reach out to Mayer Brown’s Trademark Prosecution & Brand Management practice for the best approach to navigating future registration of the mark with the USPTO.

The Case is Iancu v. Brunetti, Case No. 18-302, in the U.S. Supreme Court.