Over the summer of 2019, the Supreme Court of the United States (SCOTUS) in Iancu v. Brunetti 139 S. Ct. 2294 struck down the Lanham Act’s prohibition on “immoral” or “scandalous” trademarks, on the basis that the provisions violate the First Amendment, which protects free speech.

In doing so, the SCOTUS finished the job it had started several years earlier by striking down the ban on registering marks that “disparage” any “person living or dead.” The two rulings combine to allow registration of trademarks in the U.S. without any consideration of offensiveness or vulgarity.

In Matal v. Tam 137 S. Ct. 1744 where SCOTUS ruled that trademarks can be disparaging, an Asian-American band had launched a constitutional challenge for being denied the right to register The Slants, on the basis that it was derogatory.

The band’s frontman claimed that the name was intended to reclaim a derogatory term. The SCOTUS found in favour of the band, holding that “Speech may not be banned on the basis of the ground that it expresses ideas that offend.” This reasoning rests on the principle that what offends some may not offend others, and that the government should not make moral determinations, which are inherently subjective.

The Matal decision had the added effect of rendering moot an appeal by the Washington Redskins of a U.S. Trademark Trial and Appeal Board (TTAB) decision in Blackhorse v. Pro-Football Inc. 2015 U.S. Dist. LEXIS 89932 striking down six trademarks that included the word Redskins on the basis that these were “disparaging to a substantial composite of Native Americans.”

A legal news publication ran a story on the Matal decision, noting that Canada’s prohibition on “scandalous, obscene or immoral” marks, embodied in s. 9(1)(j) of the Trademarks Act, could face a similar constitutional challenge based on s. 2(b) of the Canadian Charter of Rights and Freedoms, which guarantees freedom of expression. Trademark lawyers interviewed for the article lamented the lack of guidance in Canada to address the issue, and ironically, that situation persists as we learned of this further SCOTUS ruling over the summer.

Nevertheless, there has been a constitutional challenge in Canada by Indigenous activist Douglas Cardinal, seeking an injunction to stop the Cleveland Indians from using their “offensive and discriminatory” Chief Wahoo logo when playing Toronto’s Blue Jays during the 2016 playoffs. However, the challenge was not brought under the Trademarks Act, as Chief Wahoo is the subject of an existing Canadian trademark registration that dates back to Feb. 19, 1988. That registration shows Chief Wahoo logo was first used in Canada in 1952.

The injunctive proceedings in Cardinal v. Cleveland Indians Baseball Company Limited Partnership et al. 2016 ONSC 6929 were resolved by an out-of-court settlement whereby the Cleveland Indians did not feature Chief Wahoo on their jerseys in Toronto that year.

The more recent SCOTUS decision in Iancu involved the use of the word “FUCT” as a trademark, which had been refused by the United States Patent and Trademark Office (USPTO) on the grounds that a “substantial composite of the general public” would find the mark “shocking to the sense of truth, decency or propriety;” “giving offence to the conscience or moral feelings;” “calling out for condemnation;” “disgraceful;” “offensive;” “disreputable;” or “vulgar.”

On appeal, the TTAB had held that ”FUCT” was “highly offensive” and “vulgar” and that it had “decidedly negative sexual connotations.” Furthermore, having reviewed the mark’s use in conjunction with the contents of the website of Brunetti, the appeal board even stated that the mark communicated “misogyny, nihilism or violence, we have no question that the term is extremely offensive.” However, the Federal Circuit Court took a different tack and invalidated the provisions on appeal, leading to an appeal to SCOTUS.

In affirming the striking down of the provisions, the majority of the SCOTUS found common ground in the core tenet that “the government cannot discriminate against speech based on the ideas or opinions it conveys.” The SCOTUS rejected the government’s suggestion that the statute could conform to constitutional requirements by drawing a line at lewd, sexually explicit, or profane marks, claiming this would require SCOTUS to rewrite the law.

Justice Samuel Alito wrote a separate concurring decision for SCOTUS, highlighting that “At a time when free speech is under attack, it is especially important for this Court to remain firm in the principle that the First Amendment does not tolerate viewpoint discrimination. We reaffirm that principle today. Our decision is not based on moral relativism but on the recognition that a law banning speech deemed by government officials to be immoral or scandalous can easily be exploited for illegitimate ends.”

Other justices of the SCOTUS gave separate judgments dissenting in part, including Justice Sonia Sotomayor, who would have held that the law does not violate the First Amendment. Rather than strike down the law, which will result in the registering of the most vulgar, profane, or obscene words and images imaginable, Sotomayor urged a narrow reading of the “scandalous” provision to address only obscenity, vulgarity and profanity.

Considering the perspectives expressed by SCOTUS, the same invalidity arguments could be advanced in Canada, where the ability to refuse registration relies on the similarly vague notion of “scandalous, obscene or immoral.” It’s difficult to see how the Canadian provisions could withstand a challenge given the overbreadth concerns highlighted by the SCOTUS.

The reasons from the SCOTUS judges provides an interesting panoply of perspectives and underscores the ethical dilemma that the striking down of the provision raises for the USPTO. Let’s face it, the status quo in the U.S. is already “FUCT.” Given that the result is likely to be the same in Canada, the Canadian government should consider a legislative amendment to narrow the language of the provisions to retain some control over what gets registered, so that we are not overrun by vulgarity and offensive marks.

This article was originally published by The Lawyer’s Daily (www.thelawyersdaily.ca), part of LexisNexis Canada Inc.