When Erik Brunetti set out in to register Fuct, the name of his then-20 year old Los Angeles-based streetwear brand, in 2011, the U.S. Patent and Trademark Office ("USPTO") had one word for him: No. Mr. Brunetti would learn the hard way that the USPTO has the authority – for more than 70 years – to bar the registration of names, logos and other trademarks that are deemed to be "immoral" or "scandalous."
According to the USPTO, Fuct – which got its start in Los Angeles in 1991 and has made its name as a predecessor of modern streetwear – fit squarely within this territory.
However, a few years after the U.S. trademark body refused to register Brunetti’s mark, The Slants case happened, and the celebrated designer’s luck would change. In June 2017, America’s highest court issued a unanimous decision in a separate case, Matal v. Tam. The Supreme Court held that the Lanham Act’s Disparagement Clause – the Lanham Act provision that prohibits the registration of trademarks that would serve to “disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” – violates the Free Speech Clause of the First Amendment.
The ruling meant that Simon Tam and the other members of the Asian-American rock band, The Slants, could not legally be barred from seeking federal trademark protection for their band name. It also meant – according to a subsequent ruling from the U.S. Court of Appeals for the Federal Circuit in December 2017, which cited the Supreme Court’s ruling in The Slants case – that Fuct, while certainly still falling within the realm of "immoral" or "scandalous," is entitled to federal trademark protection, thanks to its status as protected speech under the First Amendment.
Judge Kimberly Moore, writing for the Federal Circuit's three-judge panel, stated, that "Fuct" is, the “past tense [version] of the verb ‘fuck,’ a vulgar word, and is, in fact, scandalous,” but nonetheless, "the First Amendment protects private expression, even private expression which is offensive to a substantial composite of the general public.” The panel further held that the USPTO had failed to show (subject to strict scrutiny) why such a “content-based restriction on speech” was warranted.
The court ultimately held that the Lanham Act’s scandalous-marks provision is “facially invalid” in accordance with the First Amendment, and Brunetti, now 51, walked with a win.
However, Brunetti’s triumph may be short-lived, as the case might end up back on the table and in front of the increasingly conservative-leaning Supreme Court. As of last week, the USPTO suspended all currently pending trademark applications that contain “scandalous or vulgar” words, such as one filed by Russian feminist protest punk rock group Pussy Riot. It is currently considering whether or not to seek Supreme Court intervention in hopes of getting the high court to overturn the Federal Circuit’s invalidation of the ban on the registration of profane, sexual and otherwise objectionable trademarks.
U.S. Solicitor General Noel J. Francisco has asked the Supreme court for a second extension of the deadline to file appeal of the Federal Circuit’s decision. Following a request for extension last month, Francisco is seeking more time, claiming that another extension “is needed to permit further consultation with the Department of Commerce and the USPTO, as well as with other components within the Department of Justice.”
Even if the USPTO does file a request for Supreme Court intervention and even if SCOTUS accepts the case and upholds the validity of the ban on scandalous trademarks, Brunetti is not entirely out of luck. In the U.S., trademark rights are not dependent on the granting of a trademark registration by the USPTO (although registrations bring benefits, such as statutory presumption of validity, and nationwide priority); rights and priority of rights are created when a party actually uses his or her trademark in commerce, which Brunetti has been doing with the Fuct mark since the early 1990’s.