Looking for a way to illicit immediate shock and interest from consumers? Why not have one of America’s most fascinating swear words be related to your product or business? A Los Angeles-based clothing company founded by designer Erik Brunetti uses the infamous brand name “FUCT.”
Despite the company’s success, the brand has never been accepted as a federally protected trademark; in other words, he has been unsuccessful in seeking to “register” this term with the United States Patent and Trademark Office. This stifles his ability to stop others from using a similar trademark, even if it will cause confusion—unless a pending Supreme Court case changes the law.
Problems for Trademarks that Shock the System
In general, an individual or company may federally “register” any symbol, word, or words that represent a company or product—if it is used in commerce, is distinctive, and is not barred by statute. Traditionally, marks were barred from federal trademark protection if they were disparaging, scandalous, or immoral to the general public. Not having federal registration does not prevent using a mark to represent a certain brand or product. In fact, many brands function without federal trademark registration, rather relying on state-based trademark protection. For example, the Washington “Redskins” mark was cancelled in 2014 for being disparaging of American Indians and nonetheless the team continued use.
Systemic Change for Federal Trademark Law?
The system was slightly changed in 2017. An Asian American rock band won a Supreme Court case (Matal v. Tam) allowing them to trademark their band name, “The Slants.” The Supreme Court decided that the law prohibiting disparaging marks from receiving trademark protection violated the right to free speech under the First Amendment. Although the band name was historically a slur for people of Asian descent, the band wanted to reclaim the term. The Supreme Court’s decision was based on the idea that a trademark is privately-owned personal property and not censorable government speech.
The Tam case created lasting implications for other disparaging and scandalous trademarks, such as the long-standing fight over the “Redskins” trademark which ultimately relied on the Tam ruling to determine that cancelling the mark was unconstitutional. In the two years since Matal v. Tam, would-be trademark applicants are beginning to wonder whether the freedom of speech could be used to take aim at laws preventing registration for scandalous or immoral marks. If a word historically considered a racial slur gets a federal trademark, why can’t other offensive words get federal trademarks?
The Brunetti Case – Scandalous, Immoral, or a Violation of Free Speech?
The FUCT brand directly challenges the prohibition of scandalous or immoral trademarks. The Patent and Trademark Office denied Mr. Brunetti’s federal trademark application due to what it considered an obviously scandalous mark. Of course, the word “fuct” does appear curiously similar to the past tense version of a well-known vulgar word in the English vocabulary. Not only that, but the brand included the word superimposed over several vulgar images, including overt sexual imagery on t-shirts. Other examples that were cited include the depiction of the original vulgar term with the letter “T” superimposed over the “K,” and the brand name “FUCT” appearing over the slogan “1970 smokin’ dope and f***ing in the streets.”
The shock-and-awe designs may be a hit among fashion-forward consumers, but it did not appear to amuse the Court of Appeals for the Federal Circuit (a court whose decisions on some intellectual property matters must be followed throughout the United States rather than certain regions). It emphatically declared that the play on a word almost universally vulgar rendered the name “FUCT” a scandalous mark. Despite the apparent vulgarity of the mark, the Court determined that the law against trademarking a scandalous or immoral term was a violation of free speech. So, it decided “FUCT” is able to receive trademark registration. Why? Thanks to Tam, the concept of trademarks as private property may extend to marks for vulgar words as well. Just as “The Slants” was extended protection, the Federal Circuit believed that “FUCT” should receive the same protection. But that was not the last word.
The U.S. Supreme Court agreed to review the case and recently held oral arguments, where both the government and attorneys representing Mr. Brunetti argued for their respective sides of the case. As expected, Brunetti’s attorneys relied on the Tam case to argue that preventing immoral or scandalous trademarks from getting protection was unconstitutional. The Supreme Court Justices contemplated why the government should not be able to prevent registration for words that are clearly meant to illicit a shocking response and are not meant to communicate a certain viewpoint. Only time will tell what the Justices will conclude when the opinion is released this Summer.
The Legal Vocabulary May be in for Some Colorful New Language
The Supreme Court’s decision could potentially create a new standard that completely removes limitations for disparaging, scandalous, and immoral trademarks. If the Court agrees with the Federal Circuit, the Patent and Trademark Office could expect a barrage of trademark applications for vulgar terms.
The Supreme Court may also still cling to a narrower version of the current standards for scandalous or immoral marks with some limitations for things that may be considered truly heinous (although they will likely not give a clear definition for what is “truly heinous”).
Scandalous names are nothing new. For example, there is Quentin Tarantino’s film Inglourious B*****ds, Holy Crap Cereal, and Sassy B***h Wine. But, there is a possibility that everyone’s favorite curse words turn into intellectual property of whoever successfully gets a registered trademark for them.
This is not to say that one company would have complete control over a particular word since trademark law does not provide absolute exclusivity. There are still many other parts of trademark law that limit total control. For example, the same trademark may be used in completely different industries by different companies such as Francesca’s for a restaurant, as well as for a clothing store. Why? Because trademark owners only have the right to prevent uses of their trademark if it confuses consumers. Despite the fact that trademark owners would lack exclusive control, any change in the law could result in trademark lawyers dealing with a lot more colorful language in the near future. We will have to wait for the Supreme Court’s decision on the case. In the meantime, feel free to look up currently registered trademarks as well as trademark applications at the Patent and Trademark Office. Or, consider what types of trademarks you would like to see in the marketplace!
Loyola University of Chicago School of Law, JD 2019