Too Tasteless to Trademark?

• Author: Mark Walsh
• Pages: 20-21

20 || ABA JOURNAL MARCH 2019

The Docket

Too Tasteless to Trademark?

Court considers whether vulgar-sounding streetwear

brand name is protected by First Amendment By Mark Walsh

In 1990, Los Angeles artist and entrepreneur Erik Brunetti launched a fashion

line of T-shirts and other products with a sharply edgy name and logo. The brand

quickly helped defi ne “streetwear,” apparel that was popular with skateboarders

and counterculture hipsters.

The brand was “fuct,” and it was soon being sold around the world, including in

major stores such as Urban Outfi tters, and getting attention for items such as a shirt parody-

ing the Ford Motor Co. logo by replacing its four letters with Brunetti’s brand name.

The brand “embodies the arche-

type of American counterculture” and

“established the norm for subversive

T-shirt graphics,” Brunetti wrote in

an essay in an artsy book about the

brand published by Rizzoli New York

in 2013. “It has come to represent a

sort of paradigm or emblem that pro-

fesses the relentless questioning of

authority.”

It seems unlikely that Brunetti

conceived that he and his brand

would one day be involved in a

case on trademark law before the

U.S. Supreme Court, but that is

where he will be in April, in Iancu

v. Brunetti. The justices will decide

whether a provision of the federal

Lanham Act that bars the registra-

tion of “immoral” or “scandalous”

trademarks is facially invalid under

the free speech clause of the First

Amendment.

“This is one of the cases in which

some damage to the structure [of the

trademark process] could be done,”

says Rebecca Tushnet, a professor

of the First Amendment at Harvard

Law School who has written widely

on trademark and other intellectual

property law topics.

A ‘PHONETIC EQUIVALENT’

Brunetti waited more than two

decades to seek federal trademark

registration for his subversive brand.

That was in 2011, when the brand

was perhaps past its prime but when

Brunetti was seeking international

trademark protection under the

Madrid Protocol, an international

trademark treaty that went into e ect

in the United States in 2003.

The U.S. Patent and Trademark

O ce, which is not known as a bas-

tion of the counterculture, viewed

Brunetti’s brand name as a vulgarity

that ran afoul of the so-called scan-

dalous-marks provision.

One opinion by the trademark

o ce concluded that Brunetti’s brand

“will be perceived by his targeted

market segment as the phonetic

equivalent” of the past tense of the

most extreme and (perhaps) widely

used curse word in English usage.

Brunetti appealed the o ce’s

denial to the U.S. Court of Appeals

for the Federal Circuit, the special-

ized Washington, D.C.-based court

that handles patent and trade-

mark matters. In the meantime,

the Supreme Court in 2017 decided

Matal v. Tam, a challenge to a sepa-

rate provision of the Lanham Act that

bars the registration of “disparaging”

trademarks.

In Tam, which was pressed by the

leader of an Asian-American rock

band that sought to register its name,

the Slants, the court ruled 8-0 that

the disparagement provision violated

the First Amendment, but no ratio-

nale commanded a majority of the

court.

After the high court’s Tam deci-

sion, the Federal Circuit overruled

the trademark o ce in Brunetti’s

case. The court agreed with the o ce

that Brunetti’s brand was “scandal-

ous,” but it held the scandalous-

marks provision facially invalid.

“There are words and images that

we do not wish to be confronted with,

not as art, nor in the marketplace,”

Judge Kimberly A. Moore wrote for

the court. “The First Amendment,

however, protects private expres-

sion, even private expression which is

o ensive to a substantial composite

of the general public.”

The Trump administration

appealed to the Supreme Court,

emphasizing that the ruling could

lead to the registration of any num-

ber of vulgar terms and lewd sexual

images.

“The scandalous-marks provision

does not prohibit any speech, pro-

scribe any conduct or restrict the

use of any trademark,” U.S. Solicitor

General Noel J. Francisco told the

justices in a brief. “Nor does it restrict

a mark owner’s common-law trade-

mark protections. Rather, it sim-

ply directs the USPTO to refuse, on

a viewpoint-neutral basis, to provide

the benefi ts of federal registration to

scandalous marks.”

SHIFTING VIEW OF SCANDALOUS

The case is casting light on the

Patent and Trademark O ce’s

handling of trademark applica-

tions under the scandalous-marks

provision.

The o ce asks whether a sub-

stantial composite of the general

public would fi nd the mark scan-

dalous, which the o ce generally

defi nes as “shocking to the sense

of truth, decency or propriety; dis-

graceful; o ensive; disreputable; …

giving o ense to the conscience or

moral feelings; … or calling out for

condemnation.”

The trademark o ce’s examining

attorneys will typically rely on dic-

tionary defi nitions, news articles and

Supreme

Court

Report