The Supreme Court of the United States now provides a path forward for the registration of disparaging, scandalous, and/or offensive trademarks after holding that the USPTO’s blanket bar on the registration of these marks is a violation of the First Amendment.
Earlier this month, the Supreme Court ruled in Iancu v. Brunetti that §1052(a) of the Lanham Act, which bars the registration of disparaging trademarks, is an unconstitutional violation of the First Amendment. This decision follows the precedent set a few years prior in Matal v. Tam, in which the Supreme Court held that a neighboring provision of the Lanham Act, which prohibited the registration of disparaging marks was an unconstitutional violation of the First Amendment for similar reasons.
The Brunetti case arose from Mr. Brunetti’s attempt to register the trademark FUCT for its use in connection with his clothing line. The United States Patent and Trademark Office (USPTO) had refused to register FUCT stating that “the mark was ‘highly offensive’ and ‘vulgar,’ and that it had ‘decidedly negative connotations.’” Iancu v. Brunetti, 588 U.S. ____ (2019). As a result, Brunetti eventually challenged the constitutionality of §1052(a) of the Lanham Act in view of the First Amendment.
While the Court acknowledged that they were unable to reach a consensus on the “overall framework for deciding the case,” they did, however, agree on two propositions. Id. “First, if a trademark registration bar is viewpoint-based, it is unconstitutional” and “second, the disparagement bar was viewpoint-based.” Through these two propositions, the Justices “found common ground in a core postulate of free speech law: The government may not discriminate against speech based on the ideas or opinions it conveys.” Id. The Court concluded that because the “immoral” and “scandalous” bar of the Lanham Act is view-point based, “[i]t therefore violates the First Amendment.” Id.
What This Means Going Forward
The Supreme Court’s decisions in both Tam and Brunetti provide an avenue for applicants to register a wide range of trademarks previously thought to be disparaging, scandalous, and/or offensive. However, whether applicants will jump on this chance to register offensive and disparaging marks has yet to be seen.
Overall, these recent Supreme Court decisions represent the changing landscape of American life and how it has evolved and grown, for better or for worse, since these provisions of the Lanham Act have gone into effect decades ago.
While offensive trademarks are no longer subject to a statutory bar to registration, they may still be rejected for a number of other reasons such as being confusingly similar with other marks, merely descriptive, etc. If you are looking to protect your brand, it is highly recommended that you seek the counsel of an experienced trademark attorney.