The Federal Circuit Overturns Prohibition on Registration of “Immoral” or “Scandalous” Trademarks

Joshua Rosenberg Trademark

A U.S. appeals court recently cleared the way for trademark registration of the word “Fuct,” gutting a section of the trademark law aimed at preventing registration of immoral or scandalous marks.

The U.S. Court of Appeals for the Federal Circuit, in its recent opinion on December 15, 2017, upended decades of precedent on the registration of trademarks.

Previously, the United States Patent and Trademark Office (PTO) was permitted to refuse a trademark application if the mark comprised an “immoral” or “scandalous” matter. The basis for such refusals was found in section 15 U.S.C. § 1052(a) – Section 2(a) of the Lanham Act.

In Re: Erik Brunetti, No. 2015-1109 (Fed. Cir. 2017) was brought by Erik Brunetti, a designer and owner of the clothing apparel line, “Fuct,” when he appealed the PTO’s refusal to register the mark. The PTO examiner reasoned, in denying the registration, that the mark FUCT was the same both phonetically and in meaning as the past tense of the obscene word “fuck,” and therefore scandalous. After an unsuccessful appeal to the Trademark Trial and Appeal Board, Mr. Brunetti appealed to the Federal Circuit, arguing that although his mark might be vulgar, that does not make it scandalous, and, alternatively, that even if the mark is scandalous, it is unconstitutional to deny him registration on those grounds.

The Federal Circuit agreed with the TTAB that the mark is vulgar. However, it went on to hold that the Lanham Act’s “bar in § 2(a) against immoral or scandalous marks is unconstitutional because it violates the First Amendment.”

In closing, the United States Court of Appeals for the Federal Circuit drew a parallel to Copyright registrations, writing:

We find the use of such marks in commerce discomforting, and are not eager to see a proliferation of such marks in the marketplace. There are, however, a cadre of similarly offensive images and words that have secured copyright registration by the government. […] No doubt many works registered with the Copyright Office offend a substantial composite of the general public.

Coupled with the recent holding by the U.S. Supreme Court in Matal v. Tam, 137 S. Ct. 1744 (2017), most of the provisions of Section 2(a) of the Lanham Act have now been struck down. Moving forward, it seems the PTO may only rely on this provision to refuse the registration of marks that are deceptive or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols.

A link to the opinion may be found here