How FUCT Overturned the US Ban on Immoral, Scandalous Trademarks

InIancu v Brunetti (SCOTUS, No. 18-302)

In June 2019, the U.S. Supreme Court made a significant ruling regarding trademarking “immoral” or “scandalous” words and symbols. The decision came after a case was filed by a clothing line called FUCT, owned by artist and entrepreneur Erik Brunetti. The company’s name is an acronym for “Friends U Can’t Trust,” pronounced as four letters F-U-C-T, which is prominently displayed on their streetwear and lifestyle apparel. However, the U.S. Patent and Trademark Office (USPTO) rejected Brunetti’s application to trademark the term, interpreting it differently. The Court’s ruling has now paved the way for registering such trademarks, which were previously considered offensive or vulgar and not eligible for registration.

29 Years of FUCT

Brunetti initially founded Fuct in 1990 but was never able to secure a trademark. After a hiatus in the 2000s, he revived the brand and renewed his legal efforts. Brunetti’s 2011 trademark application was dismissed, with the Trademark Trial and Appeal Board (“the Board”) citing the name’s likeness to a profane term and communication of “misogyny, depravity, and violence” as the reason for rejecting the registration. The Board claimed the four-letter acronym violated Section 2 of the Lanham Act (also known as the “Trademark Act”), which bars trademark protection for “immoral,” “shocking,” “offensive,” and “scandalous” words. This barring gave the USPTO authority to reject any federal trademark registration for profane language or sexually graphic images.

Brunetti has continued his attempts to get the FUCT brand name trademarked so he can go after copycats, who frequently try to rip off his popular brand.

Brunetti’s efforts continued to seem futile until 2017 when the Supreme Court ruled that the Asian-American rock band The Slants could not be denied trademark protection on the basis that the band’s name was synonymous with a racially offensive term (Matal v Tam, 582 U.S. (2017); 137 S. Ct. 1744; 198 L. Ed. 2d 366; 122 U.S.P.Q.2d 1757). In that case, the Supreme Court ruled it was unconstitutional for the USPTO to prohibit trademark registration that was disparaging to an individual or group of people, stating that the denial constituted unlawful viewpoint discrimination.

“The disparagement clause violates the First Amendment’s Free Speech Clause,” Justice Samuel Alito wrote in his opinion for the Court. “Contrary to the Government’s contention, trademarks are private, not government speech.”

Other companies have also successfully trademarked names or graphics deemed indelicate to some lawmakers. In a similar free speech case decided earlier in 2019, the U.S. Supreme Court ruled that individual states cannot implement a ban on apparel featuring political messages worn at polling sites, striking down a Minnesota law as a First Amendment violation.

At the Supreme Court

Following these breakthroughs in similar cases, Brunetti brought his case back to Court this past April. This time, his legal team was armed with examples, such as The Slants’ case, to advocate for Brunetti’s freedom of speech in their arguments against the USPTO’s rejections. Like with The Slants’ case, Brunetti’s legal team claimed the rejection of the FUCT trademark infringed on a fundamental principle of free speech law: the government can’t penalize, disfavour or discriminate against expressions based on the ideas or viewpoints it conveys. In their arguments, Brunetti’s lawyer Sommer argued that if “offensiveness” is the standard for turning down a trademark, American restaurant chain “Steak ‘n Shake”, which is trademarked, shouldn’t be registered either, because “a substantial portion of Americans believe that eating beef is immoral.” Brunetti’s team also referenced that the U.K. clothing company French Connection Ltd. retained a trademark registration for their similar brand acronym, FCUK, which is an acronym for “French Connection United Kingdom.”

Brunetti and his team won their case on June 24, 2019, with a 6-3 ruling. While all nine justices agreed that the federal law banning “immoral” trademarks was too broad, the unanimity fell apart regarding “scandalous” trademarks. In the final ruling, the Supreme Court struck down the USPTO’s ban on “immoral” and “scandalous” trademarks, calling it a violation of the First Amendment, which protects free speech. Like in The Slants’ case, the Court concluded that any viewpoint-based trademark registration ban is unconstitutional and that the “immoral” or “scandalous” criteria in the Lanham (or Trademark) Act is viewpoint-based.

Commentary

Brunetti’s win seems to have opened the door to new branding opportunities. Since the June ruling, at least 90 trademarks have been filed with some variation on the “f-word,” in a rush to pin down a scandalous mark.

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