WASHINGTON — The Supreme Court agreed Friday to review a decision by the U.S. Patent and Trademark Office to deny trademark registration to the clothing line called Fuct.
With the review, U.S. justices will decide whether trademark protection can be refused to brands that the federal government finds vulgar or lewd.
Last year, the U.S. Court of Appeals for the Federal Circuit ruled for Fuct and struck down the ban on protecting “scandalous” and “immoral” trademarks as a First Amendment violation.
The Justice Department wants the Supreme Court to reverse the ruling in the Fuct case, Iancu v. Brunetti.
The Federal Circuit’s ruling over “scandalous” and “immoral” trademarks was seen as a victory for free speech, and many thought the decision would 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 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.”
The Fuct label markets streetwear that often incorporating various elements and icons of pop culture alongside anti-government and anti-religious campaigns into their designs.
The Federal Circuit, in its ruling last year, noted that the trademark at issue is “vulgar”; 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,” a three-judge 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."
In a previous case at the high court, U.S. justices in 2017 ruled unanimously that another part of the trademark law — one that banned registering trademarks that were considered “disparaging”— violated the First Amendment.
That ruling, Matal v. Tam, involved an Asian American rock group called the Slants, which tried to register the band’s name in 2011. The band was turned down by the Patent Office because officials said it was likely to offend Asian Americans.
Industry attorney Lawrence Walters, of Walters Law Group, told XBIZ he was surprised that U.S. justices have planned on taking the case.
“The decision to review the In re Brunetti case is a bit surprising, since the court already ruled that the government cannot deny registration to ‘disparaging’ marks under the First Amendment, in Matel v. Tam in 2017,” Walters said. “The reasoning in that decision should apply equally to USPTO rejections based on ‘immoral’ or ‘scandalous’ marks, at issue in Brunetti.
“It is possible that the court wants to reinforce its previous decision and put the issue to rest,” Walters said. “But since the justices decided to review the case, there is some possibility that the court could rule differently on this category of marks.
“The adult industry should carefully watch this case since many adult-oriented trademark applications have been put on hold by the USPTO pending its outcome.”
