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Trademark Office Argues That “Scandalous” Brands Should Be Treated Differently From “Disparaging” Marks, What The …?

Josh Conley \ April 12, 2019

Next week, the Supreme Court will hear oral argument on the issues of “scandalous” trademarks.  Currently, certain trademarks cannot be registered because the government deems the mark to be offensive.  This may sound familiar given the publicity surrounding the Washington Redskins trademark, which saw its registration revoked by the Trademark Office.  Trademarks such as the Redskins trademark are viewed as “disparaging” due to the racism involved in the mark. The Supreme Court, however, ruled that “disparaging” trademarks should be permitted registration.

Even though the Supreme Court ruled on “disparaging” marks, it has yet to squarely address “scandalous” trademarks.  The distinction between the two may seem arbitrary, but “scandalous” trademarks are directed at trademarks that are offensive because they are profane or otherwise explicit.

Last week, the United States Patent and Trademark Office submitted their brief on the matter.  The brief articulates why the USPTO believes it should be allowed to prevent registration on “scandalous” trademarks.

The Government argues that “scandalous” trademarks should not be scrutinized under the First Amendment like “disparaging” marks are.  The Supreme Court found that barring registration of disparaging marks was unconstitutional because it amounted to a viewpoint restriction.  Government restriction of viewpoints is almost always struck down by the Supreme Court as it violates the First Amendment’s freedom of speech.

In contrast, the USPTO asserts that “scandalous” marks cannot be registered “not because they are though to convey offensive ideas, but because such marks reflect an offensive mode of expressing whatever the idea the speaker wishes to convey.”  In other words, it is not that the applicant for the mark has an offensive position but that the way they are expressing that position is what is offensive. In this way, the Government alleges that it is maintaining a neutral position on the idea encompassed by any particular trademark.

The Government also alleges that allowing registration of “scandalous” trademarks would lead to a slippery slope.  For instance, the Government is currently able to restrict the advertisers from displaying “sexually explicit images or profanity on city buses and billboards.”  A ruling against the Government could lead to advertisers pushing back to allow such advertisements to be displayed.

This case arises from the streetwear brand “Fuct” after it was refused registration by the Trademark Office.  Fuct owner, Erik Brunetti, relies on the broad language of the Supreme Court’s earlier ruling, which indicated that “giving offense” is the type of viewpoint that should only be limited in rare occasions.  

Brunetti is not the only applicant whose application has or is currently being refused for being scandalous.  A search of the Trademark Office turns up dozens of applications for registration that are being refused. Like Fuct, many of these applications take a play on profanity such as “f*ck”, “f***”, or “fvck” with a “V” rather than a “U”.

Interestingly, some other usages have not been dinged as being scandalous.  These include, “AF”, “WTF” and “F!@#$%&”. This suggests that even if the USPTO prevails on the issue, there is still the possibility that registration is possible as long as the profane term is sufficiently obscured.

If you have been sitting on a rather profane trademark it is likely best to wait a bit longer and see how the Supreme Court comes down on the issue.

IPR Attorney, Patent Lawyer, Copyright and Trademarks in Iowa
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