Scandalous As…

Cole Schotz

Cole Schotz

Fuct, a L.A. based clothing brand, is bringing a trademark case to the U.S. Supreme later this month. In the past, the United States Patent and Trademark Office (“USPTO”) has prohibited registration of marks that constitute immoral or scandalous matter, as well as marks that are disparaging. In 2017, the Supreme Court famously overturned the USPTO’s ban on “disparaging” trademarks when it permitted registration of the mark “The Slants” for an Asian-American rock band (Matal v. Tam, 137 S. Ct. 1744 (2017)). Now the Supreme Court will turn its attention to the question of whether the scandalous-marks provision is similarly unconstitutional.

The USPTO argues in this case that the scandalous matter limitation is permissible because it is viewpoint-neutral unlike the prior disparagement provision – an issue that was expressly “left open” by Justices Alito and Kennedy in the disparagement decision. The application of the scandalous marks limitation often turns on the context of the trademark and the potential consumer’s perception. However, the USPTO insists that the limitation does not necessarily look at an applicant’s subjective intent or viewpoint, but rather prohibits only offensive methods of expressing an idea.

Erik Brunetti, owner of the Fuct brand, argues that the scandalous matter limitation should be treated just like the disparagement clause was treated, and should be ruled unconstitutional. Brunetti argues that the USPTO’s scandalous matter limitation has not been applied in a viewpoint neutral way to prevent registration of “profanity, excretory and sexual matter”, but has also blocked proposed third-party marks like “Coffee Nazi” for a book series, “Taliban Cookie Company” for online wholesale and retail store services, or “Acapulco Gold” for suntan lotion. Meanwhile, the USPTO has allowed registration of trademarks for “FCUK”, “WTF is up with my love life?!”, “Famous Feces”, “Poop”, “Irish by intercourse”, “Satan’s Piss”, and “Mile High 69”. Among other things, Brunetti argues that this purportedly selective application of the scandalous matter limitation proves that the USPTO’s ban is not content-neutral.

The case, Iancu v. Brunetti, No. 18-302, is set for oral argument on April 15.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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