Trademarking Scandalous Matter

Scandalous Matter

Introduction

“The times they are a changin”!  Trademarks are not supposed to contain scandalous or immoral matter. However the courts are not enforcing this prohibition and the “most profane” words are now allowed as trademarks

The Supreme Court today (June 24, 2019) ruled that the mark “Fuct” could be registered on the Principal Register of the US Trademark Office.  The case is Iancu v. Brunetti.  The mark is used in conjunction with clothing marketed by Brunetti, and the clothing is apparently directed to “street ware”, e.g., clothing popular with skateboarders. The mark may be deemed scandalous matter, but it can also be a trademark identifying the origin of clothes.  

Discussion

Section 2(a) of the US Trademark statutes stipulates that a mark cannot be approved and registered if it “consists of or comprises immoral . . . or scandalous matter”.  See U.S.C. Section 1052(a).  To be considered immoral or scandalous, “the PTO must demonstrate that the mark is shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscious or moral feeling; . . . [or] calling out for condemnation”.  See In re Mavety Media Group Ltd, 31 USPQ 2d 1923, 1925 (Fed. Cir. 1994).

The marks “Queen Mary” for lingerie and “Madonna” for wine were deemed scandalous in the 1930’s and therefore could not be registered as trademark by the US Trademark Office. 

The courts have recognized that attitudes have changed but non-the-less, ruled in 1998 that a mark consisting of an image of a dog defecating was scandalous and in 1996 ruled that an image of a man’s head in the form of male genitalia was impermissibly offensive.  In 2011, it was ruled that a bottle shaped to form the image of a hand with an extended middle finger was also not permissible for trademark registration.   

However, in recent years, the Supreme Court unanimously ruled that a rock band could utilize the name “The Slants” in spite of acknowledging that the name was deemed disparaging of Asian’s.

In the Supreme Court oral argument regarding the “Fuct” mark, everyone in the room deliberately avoided speaking or pronouncing the mark out loud.  This required verbal gymnastics.  

The Supreme Court justices were troubled by the subjectivity of the Trademark statute barring “immoral” language.  Justice Gorsuch questioned whether the word “phuct” could be registered.  How would a citizen know what is permissible commercial speech, e.g., a registerable trademark. Also discussed by the justices was that certain words have documented/measurable physiological impact upon person hearing the words.  This impact is generally associated with negative emotions.  (But then, isn’t the purpose of a good trademark is to have an impact on the consumer within the marketplace?)

Conclusion

The clothing line originated in California (where else except perhaps New York).  There will be no conclusion to this issue until the statutory provision is relegated to the dustbin of trademark history.  

It is suggested that it would be worthwhile reading my other articles pertaining to trademarks such as Patents, Copyrights and Trademarks.  Also What is a Trademark