Breaking: Federal Circuit Holds Ban on Offensive Marks Unconstitutional

By Josh Gerben, Esq.

The Federal Circuit held today that the U.S. trademark law’s ban on offensive and derogatory marks is unconstitutional, following a similar decision by the Supreme Court earlier this year.

Several months ago, in a landmark trademark law decision, the Supreme Court found that the Lanham Act’s ban on disparaging marks was unconstitutional. It held that the denial of a trademark registration based on the content or message of the underlying trademark is “view point discrimination” and that the law’s restrictions did not meet “strict scrutiny” under the First Amendment.

However, the Supreme Court case decision was limited to disparaging trademarks, which “disparage” a specific group of people. The case did not directly deal with the Lanham Act’s similar ban on “offensive,” “scandalous” and “immoral” trademarks. Many trademark attorneys (including those at Gerben IP) believed that it was only a matter of time before those restrictions were also thrown out.

Today, the Federal Circuit held that the Lanham Act’s ban on “offensive,” “scandalous” and “immoral” trademarks was also unconstitutional, erasing over seventy years of precedent and opening the doors to a more “offensive” trademark registry.

How We Got Here – In Re Brunetti

In 2011, Erik Brunetti filed a trademark application for “FUCT” for various apparel items. The U.S. Patent and Trademark Office (USPTO) denied his application on the basis that the mark was “scandalous” under 2(a) of the Lanham Act. He appealed the decision to the Trademark Trial and Appeal Board, who affirmed the Examining Attorney’s decision that FUCT is the equivalent of the popular curse word and that it was scandalous.

Brunetti appealed the decision to the Federal Circuit, who decided to wait until the Supreme Court had ruled on the similar case, Matal v. Tam, before issuing their decision.

Today, the Federal Circuit overturned the Trademark Trial and Appeal Board in a decision that opens the floodgates to derogatory, scandalous and immoral trademarks that previously would not have qualified for federal trademark registration.

The Floodgates are Open

Since the applicants in the Tam and Brunetti cases appealed their decisions, the USPTO has been suspending trademark applications it would usually deny under Section 2(a). With today’s decision, those applications will now move forward, and applicants with all sorts of marks will rush to file applications to protect words, phrases, and pictures that were not previously registerable.

What remains unclear is whether there are any limits to what the USPTO can restrict. For example, Section 2(a) of the Lanham Act bans the registration of flags and certain insignia. Is that a restriction of free speech? What about the ban on registering a trademark that includes the name of a living person without their consent (like this “Dump the Trump” application that was denied)?

Are there any content-based restrictions? Can someone, for example, register hate-speech that incites violence? Can someone register a depiction of, for example, an illegal act? In a concurring opinion in Brunetti, Judge Dyke tried to address some of these issues, saying that at least some part of Section 2(a) could be kept and used in the case of “obscene” materials, which are not protected under the First Amendment. The majority disagreed with this assertion, stating that the court would be improperly rewriting the statute, implying that it was up to Congress, not the Federal Circuit, to write a law that would meet the strict scrutiny standard for restricting free speech.

There are two big take-aways from this case.

The first is that trademark owners can now expand their potential trademarks into edgy, offensive material and be able to register it with the USPTO. This opens doors for a lot of trademark owners that previously were unable to gain valuable benefits through federal registration and, in the long term, can help create strong, long-lasting (if somewhat off-color) trademarks.

The second is that existing brand owners will need to be extra vigilant in policing their trademarks, because now the USPTO has one less tool at hand to weed out potentially damaging trademarks. Now, someone could register a trademark that may not only be infringing, but also could be highly offensive to some people, increasing the chances of irreparable harm.

Thinking about registering a potentially offensive trademark? Worried about how you can protect your existing brand? Contact our trademark attorneys today for a free consultation.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.