Anyone of a certain age remembers the late comedian George Carlin’s 1972 bit called “Seven Dirty Words.” For decades, just as you could not say certain words on television (or radio), you similarly could not federally register those words (and other “offensive” or “scandalous” words or images) as trademarks. But just as television censors have had to adjust a bit since 1972, the USPTO had to make some adjustments in 2017.
On December 15, 2017, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) issued its opinion in the case In Re: Brunetti. At issue in the case was whether a trademark application for the mark FUCT, the equivalent of the past tense of the F-word, could be federally registered. The USPTO had refused registration of the mark, deeming it ‘scandalous’ or ‘immoral’ under Section 2(a) of the Lanham Act, and in 2014, Brunetti appealed the USPTO’s refusal to the Federal Circuit.
While Brunetti’s appeal was pending with the Federal Circuit, a second and unrelated case was winding its way through the system, all the way to the U.S. Supreme Court. This other case was Matal v. Tam and it involved an Asian rock band whose mark, THE SLANTS was refused registration as being “disparaging” under the Lanham Act. In July 2017, the Supreme Court found the Lanham Act’s “disparagement” clause violated the First Amendment and was unconstitutional. This opened the door for Brunetti to make the same argument, namely that the USPTO’s refusal to register the mark FUCT because of the “scandalous” or “immoral” clauses of the Lanham Act was similarly a violation of the First Amendment. The Federal Circuit unanimously agreed that the “scandalous” and “immoral” clauses of the Lanham Act were unconstitutional and held that Brunetti could register his mark.
In view of the now defunct disparagement, scandalous and immoral clauses of the Lanham Act, there are many pending and newly filed applications that may offend those with delicate sensibilities. Just how much value brand owners will find in this newly opened line of registrable marks remains to be seen. It is possible that some marks will alienate as many consumers as they draw. However, there is always some value to brands with shock factor or humor, and some businesses will certainly take advantage of these new registration opportunities.
All brand owners must keep in mind that these changes in registrability do not mean that all ‘risqué’ marks will be registrable. They must still pass muster under all other aspects of the Lanham Act, so the goods must be federally legal (think about the state of legislation around marijuana right now) and the marks still cannot be confusingly similar to other marks, or descriptive (which could be very interesting!). Brand owners must also consider that these changes are in the US only, so brands that are now registrable stateside may not be registrable in other foreign markets.
So, before preparing applications for federal registration of any of the Seven Dirty Words (or anything of the same genre), consult with a trademark expert and develop a brand strategy. You do not want to go down a road that leads to your brand being bleeped out!