Offensive trademarks are protected by the 1st Amendment. The Supreme Court held that the USPTO’s blanket bar on the registration of these marks is a violation of the 1st Amendment. As a result, you can now register disparaging, scandalous, and/or offensive trademarks.
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 1st Amendment. This decision follows the precedent set a few years prior in Matal v. Tam. In that case, 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 1st 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 USPTO refused to register FUCT. The USPTO stated “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.
The Court was unable to reach a consensus on the framework for deciding the case. The Court, however, agreed on two propositions. Id. “First, if a trademark registration bar is viewpoint-based, it is unconstitutional.” “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. Accordingly, the 1st amendment protects offensive trademarks.
What This Means Going Forward
The Supreme Court’s recent decisions provide an avenue for applicants to register a wide range of trademarks. Including trademarks that the USPTO deemed disparaging, scandalous, and/or offensive. However, whether applicants will jump on this chance to register offensive and disparaging marks has yet to be seen.
While offensive trademarks are no longer subject to a statutory bar to registration, they may still be rejected for a number of other reasons. For example, the trademarks may be being confusingly similar to other marks, merely descriptive, etc. If you are looking to protect your brand, you should seek the counsel of an experienced trademark attorney.