Trademarking Profanity: Will the U.S. Supreme Court Ruling Unleash Heck?

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IP attorney John A. Squires discusses the impact of the Supreme Court ruling on trademarking profanity.

A business owner has prevailed in a Supreme Court case that pitted the right to free speech against a federal statute barring protection of profanity. The highest court in the U.S. on Monday sided with Los Angeles clothing designer Erik Brunetti, who repeatedly tried to trademark his brand name so he could shut down a copycat competitor. But the U.S. Patent and Trademark Office rejected his application because agency officials determined the name was “immoral or scandalous” as defined by law. The name in question: FUCT, which is word play for “Friends U Can’t Trust.”

Brunetti said the mark is pronounced as four letters, one after the other. “But you might read it differently and, if so, you would hardly be alone,” wrote Justice Elena Kagan in the majority opinion, which was joined by justices Clarence Thomas, Ruth Bader Ginsburg, Samuel Alito, Neil Gorsuch and Brett Kavanaugh.

The majority ruled that the trademark office violated Brunetti’s right to free speech, while the three dissenting judges reinforced that the First Amendment protection does not extend to vulgarities. John A. Squires is a partner at Dilworth Paxson LLP and chairman of the IP and Emerging Company Practice at the firm. He analyzed the case for the Knowledge@Wharton radio show on SiriusXM. (Listen to the podcast at the top of this page.) The following are key points from his discussion.

A Precedent Was Set

Squires believes the Supreme Court justices were able to make quick work of the Brunetti case because of a precedent set in Matal v. Tam.  In 2017, the court unanimously sided with Simon Tam and his band, The Slants. Tam, who is Asian-American, wanted to register the band’s name with the U.S. Patent and Trademark Office. The office denied the application, contending the name was racially offensive. Tam appealed and ultimately won when the nation’s highest court ruled that the agency’s denial violated the First Amendment right to free speech.

When Brunetti applied to trademark his fashion brand, the office once again denied the application because it determined that the designer’s logo was profane.

Both cases centered on interpretation of a particular clause embedded in the Lanham Act of 1946. The Disparagement Clause prohibits trademarks that contain “immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

“The upshot of the majority decision is, let the market decide what it likes and what it doesn’t. It will buy what it likes and what it doesn’t.”

In both cases, the high court ruled in favor of the applicants because profanity is subjective. Although the decision was split, all justices agreed that the disparagement provision “violated the First Amendment because it discriminated on the basis of viewpoint.” In other words, government bureaucrats shouldn’t be allowed to decide what they think is offensive language.

“In the Slants case, the disparagement clause was determined to be viewpoint based,” Squires said. In Brunetti, “the way the trademark office went about applying the standard to determine immorality or scandalous terms was determined to be viewpoint based, and therefore the ban fell.”

Squires pointed out a notable difference in the cases: Tam argued that registering the band’s name would help reclaim some cultural heritage and drain the word of “its denigrating force as a derogatory term for Asian persons.” Brunetti, on the other hand, wanted to give some street credibility to his edgy, Los Angeles-based clothing brand.

“It’s a little different because this is apparel manufacturing. It’s more of an utterance, if you will, rather than an association typically with trademark as a badge of origin of the good or service from the producer,” Squires said.

 A Rose By Any Other Name

The court’s decision opens the door to an interesting discussion about linguistics, especially in the context of business. Squires said consumers will ultimately decide whether they are offended by Brunetti’s branding.

“The upshot of the majority decision is, let the market decide. Let the market decide what it likes and what it doesn’t. It will buy what it likes and what it doesn’t,” he said.

Squires said case highlights the “beautiful mess” that is free speech and referenced Word By Word, a book by lexicographer Kory Stamper that examines the ever-changing use of words. The word “bitch,” for example, transitioned from its 1800s definition of a female dog to a modern pejorative for women. In writing the majority opinion for the Brunetti case, Justice Elena Kagan recognized this evolution of language, he said.

“Societal mores do change over time,” he said. “People may call it the coarsening of the culture, and that could be true, but if people are spending their money on apparel goods delivering a certain message which they respond to or not, that’s the market speaking. And the government is not supposed to be expressing a viewpoint as to whether it’s moral or scandalous or disparaging.”

Squires expects that the ruling will prompt a “land grab” by other business owners who will try to register subversive names under the banner of free speech, but it doesn’t mean they will automatically get it because existing regulations still apply and trademarks are hard to obtain for words that are commonly used.

“Irrespective of the court makeup, free speech is an irresistible force in this country. It’s one of the foundations that the nation was built upon.”

Will This Change the Standard?

From a legal perspective, one of the most important aspects of the case is what it means for the Lanham Act, which was written more than 70 years ago. Is it too narrowly written? Is it too broad? Squires said those are relevant questions that the justices correctly punted back to Congress.

The majority opinion referred to previous trademarks that were both granted and denied, which shows the “arbitrary and capricious manner” in which the standard has been applied, Squires said.

“Now, to agency law aficionados, ‘arbitrary and capricious’ is a loaded term,” he said. “I think they were sending a warning shot across the bow to whether the agency reacts by rule-making or Congress acts by legislation — that they have something that’s tailored that is less apt to be applied in an arbitrary and capricious manner and not use broad terms like immoral or scandalous.”

Squires said he was a bit surprised that the court took up the Brunetti case because the Slants case seemed so decisive on the issue. But the court’s message is now clear that viewpoint-based regulation “won’t be able to stand,” he said.

“And don’t forget, the trademark office examiners, they’re real people, too. They live in the real world and they have to make decisions based upon their experience and background,” Squires said. “The Lanham Act was enforced in a series of rules that the agency, the examiner, is supposed to apply in making these determinations.”

Free Speech is Sacrosanct

Squires thinks the broader takeaway from the case is that Americans greatly value the right to free speech no matter where they fall on the ideological spectrum. In some ways, he said, the court’s decisions in both the Brunetti and Tam cases can be seen as unifying in the wake of so much current political upheaval.

“Interestingly, it’s told me that, irrespective of the court makeup, free speech is an irresistible force in this country. It’s one of the foundations that the nation was built upon,” he said. “No matter what your political views are, people take great care to ensure that the government does not have an opportunity to squelch speech or censor speech, whether you’re applying to it for rights or whether it’s issuing legislation to regulate behavior.”

Squires drew an astute comparison between laws, regulations and policies passed by Congress, which are subject to change and interpretation, and the Bill of Rights, which enshrines the right to free speech.

“The Bill of Rights offers protections for the citizenry in general, and it was designed to protect the majority from converging upon the minority,” he said. “I think this is a great example of that, of the penumbra, the blocking power, that the Bill of Rights provides, especially the First Amendment, versus interpreting statute. When those two collide, it looks like the Bill of Rights is going to win every time.”

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