Court Wrestles With 'Immoral' Trademarks in 'Fuct' Case

Court Wrestles With 'Immoral' Trademarks in 'Fuct' Case
Rhett Pardon

WASHINGTON — The ban on “scandalous" or "immoral” trademarks should be declared unconstitutional under the same reasoning that the U.S. Supreme Court used to strike down a ban on “disparaging” marks, an attorney representing mainstream clothing line Fuct told the U.S. Court of Appeals for the Federal Circuit.

Yesterday, Fuct 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, is seeking a reversal of a decision by the U.S. Patent and Trademark Office that rejected a trademark application for the brand. The Fuct label markets streetwear often incorporating various elements and icons of pop culture alongside anti-government and anti-religious campaigns into their designs.

If the Federal Circuit rules for Fuct and allows trademark registration, a decision could amount to a sea change curtailing the Patent and Trademark Office’s powers to refuse and cancel registrations.

And that could amount to a boon for adult entertainment companies seeking to register sexually explicit or vulgar trademarks for intellectual property protection.

In oral arguments yesterday, judges at the Federal Circuit expressed frustration that a Justice Department attorney was evading the question of exactly what valid government interest was served by the ban, according to Bloomberg.

That Justice Department attorney finally said the government’s interest was to encourage the use of trademarks that are not scandalous or immoral, or ones that offend the sensibilities of the public at large.

Bloomberg reported that Federal Circuit judges and lawyers yesterday made frequent reference to the U.S. Supreme Court’s 1978 ruling in Federal Communications Commission v. Pacifica Foundation, which said that the government could ban the broadcast of George Carlin’s “Seven Dirty Words” act on the public airwaves during certain times of day.

The Pacifica case said that the government could restrict indecent language to times when children were unlikely to hear it accidentally.

One judge proceeded to ask Sommer whether “immoral or scandalous” could be defined as “indecent" — and, thus, OK to restrict. Sommer, however, rejected that argument because restricting certain speech from being broadcast at specific times isn’t comparable to denying a trademark registration, which can’t be limited to certain times of the day, Bloomberg reported.

Many in legal circles believe that the Federal Circuit will likely hold that the scandalous matter prohibition is unconstitutional viewpoint discrimination under the Supreme Court’s rationale in Matal v. Tam, which ruled on disparaging marks.

In that case, the high court ruled for Siman Shiao Tam and his rock band, The Slants. The court unanimously 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.” 

But the high court only ruled on the disparaging trademarks ban in The Slants case.

Immoral and scandalous trademarks are covered by a different but very similar statute — 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.”

A decision in the Fuct case is now pending.