Ruling Clears Way for Registration of Explicit Trademarks

Ruling Clears Way for Registration of Explicit Trademarks
Rhett Pardon

WASHINGTON — In a ruling of particular interest to adult companies, a federal appeals court has held that a bar on registering immoral or scandalous trademarks is an unconstitutional restriction of free speech.

The 3-0 ruling issued today by the Federal Circuit Court of Appeals likely will amount to a sea change curtailing the U.S. Patent and Trademark Office’s powers to refuse and cancel registrations.

It also is certain to bring a large uptick of brands seeking trademark registration for products and services that might be considered lewd, crass, or even disturbing to some.

The case decided by the appeals court involved the Fuct label, which markets streetwear often incorporating various elements and icons of pop culture alongside anti-government and anti-religious campaigns into their designs.

In oral arguments earlier this year, Irvine, Calif., attorney John R. Sommer told the court that scandalous or immoral language can express a constitutionally protected viewpoint and that trademarks like Fuct should be given the green light to be protected.

Sommer, on behalf of Fuct's founder, Erik Burnetti, was seeking a reversal of a 2011 decision by the U.S. Patent and Trademark Office that rejected a trademark application for the brand. Burnetti founded the company in 1990.

The Fuct case centered on Section 2(a) of the Lanham Act, 15 U.S.C. §1052(a), which lists several kinds of trademarks that the U.S. Patent and Trademark Office can’t register, including a trademark that “consists of or comprises immoral, deceptive or scandalous matter.”

In today’s eight-page concurring opinion, the court noted that the trademark at issue is “vulgur”; however, the government shouldn’t be in the business of policing offensive speech.

“We find the use of such marks in commerce discomforting, and are not eager to see a proliferation of such marks in the marketplace. There are, however, a cadre of similarly offensive images and words that have secured copyright registration by the government,” the Federal Circuit panel wrote. “There are countless songs with vulgar lyrics, blasphemous images, scandalous books and paintings, all of which are protected under federal law.

“No doubt many works registered with the Copyright Office offend a substantial composite of the general public. There are words and images that we do not wish to be confronted with, not as art, nor in the marketplace.

“The First Amendment, however, protects private expression, even private expression which is offensive to a substantial composite of the general public. The government has offered no substantial government interest for policing offensive speech in the context of a registration program such as the one at issue in this case."

Industry attorney Lawrence Walters, of Walters Law Group, told XBIZ the ruling is a “well-reasoned opinion that clears the way for registration of explicit marks by adult industry operators, or anyone else who chooses to use such brands.”

“The prohibition on immoral and scandalous registrations never made sense to me, from a First Amendment standpoint, and now the Federal Circuit has put the final nail in the coffin on that form of government censorship,” Walters said. “The court correctly found that this restriction on speech could not survive either the strict scrutiny test or the intermediate scrutiny test, given the lack of any compelling or substantial government interest.  

“Judge [Timothy] Dyk, in the concurring opinion, would have narrowed the scope of the prohibition to limit only ‘obscene’ marks. This is striking since it suggests that Judge Dyk believes a word, itself, could somehow be obscene, under the Miller Test.  Fortunately, that opinion did not carry any of the other judges.

“Potentially, the USPTO could try to seek rehearing or review by the U.S. Supreme Court. But given the strength of the opinion, and its reliance on the Tam case already decided by the Supreme Court, the prospect of a reversal looks unlikely.” 

In the Tam case, the high court struck down a part of the federal trademark registration statute that prohibits registration of marks that may “disparage … or bring into contempt or disrepute” any “persons, living or dead.”

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