Who’s to say whether your business’ trademark is scandalous or immoral, right? Well, until recently that decision was clearly in the seemingly arbitrary hands of the USPTO examiner who got their hands all over your vulgar application. And that decision could often mean the difference between whether your trademark application was denied or approved.

The language of the federal Lanham Act which governs trademarks (and thus gives trademark holders the ability to take legal action against those who would infringe on protected names, slogans, graphics, logos, and other marks) specifically states that a trademark application will not be approved by the USPTO if the mark “consists of or comprises immoral…or scandalous matter” among other restrictions.

That prohibition against approving immoral or scandalous trademarks (which are often conflated together in trademark litigation as marks that are “vulgar”) has long been controversial, and led to legal disputes over everything from “Madonna”-branded wine in the 1930s to “Bubby Trap”-branded bras in the 1970s to quite a lot of things branded as “MILF” in more recent decades.

But a 2017 Federal Circuit decision which ruled that the prohibition against scandalous or immoral trademarks violates the First Amendment suggests that the Supreme Court may eventually rule that the scandalous or immoral trademark prohibition is also unconstitutional. This 2017 decision follows the Supreme Court decision invalidating a separate Lanham Act prohibition against approving “disparaging” trademarks on similar grounds, in a case brought by the singer of the Asian rock band The Slants (the USPTO initially rejected approving a trademark of the band’s name as disparaging against Asian people).

How “Fuct” Won Its War Against the USPTO

The historic decision by the Federal Circuit of In Re Erik Brunetti followed the rejection of Mr. Brunetti’s application for trademark protection of the name “FUCT,” the name of his popular clothing brand. While Mr. Brunetti argued that “FUCT” merely was an acronym for “Friends yoU Can’t Trust,” and that there was nothing vulgar about that, the court agreed with the USPTO for obvious reasons that there were indeed vulgar connotations raised by the word “FUCT” that invoked the scandalous and immoral prohibition.

But while the court did find the “FUCT” trademark to be vulgar, it decided that enforcing the Lanham Act’s prohibition against scandalous or immoral trademarks would be an impermissible restriction on the First Amendment guarantee against restrictions on free speech.

To be sure, working out First Amendment free speech protections is often far more complex than commentators and free speech advocates make them out to be, which is in part why the decision for why FUCT should not denied its trademark based on grounds for vulgarity goes on for a full 42 pages. For example, obscene speech is not protected by the First Amendment, although “obscene” is a far higher bar than “vulgar” and was not at issue in this case.

What was discussed by the court were similar ideas expressed by the Supreme Court in The Slants decision invalidating the “disparaging” prohibition, namely that, granting trademark protection to a trademark with language or images that some might find offensive does not involve the federal government in the speech itself such that the level of First Amendment protection would be lower, as might be the case on publicly-owned airwaves or property.

Of particular interest to the Federal Circuit in invalidating the prohibition against scandalous or immoral trademarks on free speech grounds was the seemingly arbitrary nature in which USPTO examiners were rejecting and accepting otherwise similar trademarks. The court pointed out the following examples, among others:

  • “FUGLY” was approved as a trademark for clothing but rejected as a trademark for alcohol
  • “TURD HERDERS” was approved as a trademark while “ROLL TURD” was rejected (you can make your own guesses on what commercial products these related to)
  • “$#*! MY DAD SAYS” was approved, while “NO $#!+” was rejected
  • 20 different iterations of MILF were approved (including “FAT MILF” which apparently is a sandwich), while 20 others were rejected (including a self-help book called “FROM SOCCER MOM TO MILF”).

Where We Go From Here

The USPTO does have the right to appeal the Brunetti decision to the US Supreme Court, and it apparently is still mulling over the idea, but The Slants decision does indicate the Supreme Court is certainly not afraid to invalidate the Lanham Act trademark prohibitions on constitutional grounds.

Which is good news for the band Thunderpussy, which saw its application for trademark protection for its band name initially rejected in August 2015 on the grounds that “Thunderpussy” is scandalous, although the application has been put on hold in light of the recent decisions involving FUCT and The Slants.

In the meantime, think twice before rejecting your next band or sandwich name proposal because you are worried it is too scandalous for trademark protection, and stay tuned to The Fried Firm’s blog for more updates.