The Lanham Act governed by The United States Patent and Trademark Office sets a precedent on what kind of terminologies can be used when trademarking brand names. A subtext of The Lanham Act states that the Trademark Office has the right to deny trademark requests pertaining to “scandalous” or “immoral” words and symbols.
The U.S. Supreme Court recently accepted to hear arguments on a case relating to whether or not the trademark office is using their policies to infringe on the first amendment right to free speech.
In 2014, fashion designer Erik Brunetti was turned down by the The United States Patent and Trademark Office when he attempted to trademark the name “FUCT” for his brand, a term that references a profane word. Erik appealed to the U.S. Circuit Court of Appeals in Washington where the court ruled that the trademark policy being argued “impermissibly discriminates based on content in violation of the First Amendment.” In detail, Federal Judge Kimberly A. Moore stated:
“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.”
However, the trademark office appealed to the Supreme Court to review the case and overturn the decision of the circuit court. It is important to note that in 2017, the U.S. Supreme Court struck down a trademark policy that prevented people from trademarking brands that disparaged certain types of people, beliefs, or institutions. This case, Matal v. Tam, related to an Asian-American band that requested to trademark their band name, The Slants, which the trademark office rejected. Although Brunetti’s case deals with a profane word, people believe that precedents set by Matal v. Tam may take a role in this decision.
The trademark office specifically stated that Congress has not established any laws that prevent the ban of speech relating to profane comments. The office further elaborates that the ban on profane comments is “viewpoint neutral,” therefore legal.
Viewpoint neutrality is a concept of the First Amendment that states the government must make free speech rules that apply to all institutions equally and may not discriminate based on the message being advocated. Setting bans on comments that disparage people or beliefs is not “viewpoint neutral” because it can possibly discriminate different types of people or beliefs from expressing themselves. This is one of the reasons the Supreme Court struck down trademark bans relating to Matal v. Tam.
However, the trademark office argues that a ban on profane comments being trademarks is “viewpoint neutral” because profane and/or sexual comments do not pertain to types of people or beliefs. Professor of Intellectual Law Sarah Bernstein from the University of Oklahoma states that because the Supreme Court is accepting this case, it must mean that they are receptive to what the trademark office is claiming. Whether or not the ruling of the circuit court will be upheld in favor of Brunetti or overturned in favor of the trademark office will be settled on a future date.