7 January 2019Trademarks

SCOTUS to rule on ‘scandalous’ trademarks’ registration

The US Supreme Court is to review a law which blocks the registration of “scandalous” and “immoral” trademarks.

On Friday, January 4, the court agreed to decide whether the Lanham Act’s disparagement clause, section 2(a) violates free speech.

Erik Brunetti, owner of streetwear brand Fuct, had applied to register a trademark for the name but the US Patent and Trademark Office (USPTO) initially denied the application, in 2011.

The USPTO ruled that it was immoral or scandalous.

According to law and business blog, in an interview with retailer Goodhood, Brunetti said the name would be pronounced as “f****d”, while also serving as an acronym for “Friends You Can’t Trust”.

Brunetti appealed against the USPTO’s decision, but in August 2014 the Trademark Trial and Appeal Board (TTAB) agreed with USPTO and rejected the registration.

However, the US Court of Appeals for the Federal Circuit overturned the TTAB’s ruling and granted Brunetti the trademark in December 2017.

The Supreme Court’s decision to hear the case comes after the USPTO petitioned the Supreme Court to review the case in September 2018.

Asian-American band The Slants faced a similar battle with the USPTO and their case made its way through the courts. In June 2017, the Supreme Court ruled in favour of The Slants.

In that decision, the court ruled that the legislation prohibiting the registration of trademarks that “disparage” or “disrepute” any “persons, living or dead, institutions, beliefs or national symbols” violates the free speech clause of the First Amendment.

Shortly after The Slants’ win, in December 2017, the Federal Circuit cited the Supreme Court’s ruling in that case when ruling in favour of Brunetti.

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More on this story

8 January 2019   If the US Supreme Court rules that copyright owners must obtain approval of their registration before filing an infringement suit, it could prove much more expensive for creators, lawyers have told WIPR.
15 April 2019   The US Supreme Court will today, April 15, hear arguments over whether it should permit the registration of “scandalous” or profane trademarks, a move which critics say would be unconstitutional.
16 April 2019   The US Supreme Court is likely to overturn the ban on registering scandalous trademarks following oral arguments in Iancu v Brunetti yesterday, lawyers have told WIPR.