- Click here for the article.
When Erik Brunetti first attempted to register the name of his famed streetwear-slash-skatewear brand – in 2011, the U.S. Patent and Trademark Office ("USPTO") had one word for him: no. As Mr. Brunetti would soon learn the hard way, the USPTO, as the arbitrator of federal trademark registrations in the United States, has the authority to bar the registration of names, logos and other trademarks that it deems to be "immoral" or "scandalous." In the eyes of the USPTO, “fuct" – the name of Mr. Brunetti’s brand – fit squarely within this territory.
. . . the Supreme Court agreed on Friday to review the Federal Circuit’s decision, after the USPTO’s formally requested that the Supreme Court take on the case. At issue, according to the petition filed on behalf of Andrei Iancu, the Under Secretary of Commerce for Intellectual Property and the Director of the USPTO in September, is whether the Lanham Act’s prohibition on the federal registration of “immoral” or “scandalous” marks is facially invalid (i.e., unconstitutional) under the Free Speech Clause of the First Amendment.
According to the USPTO’s petition, the lower court erred in siding with Brunetti. In the 73-page filing, the USPTO argues that the Lanham Act’s ban on the registration of scandalous marks does not run afoul of the First Amendment because it does not restrict what may be used as trademarks, only what may be registered. In other words, the USPTO may refuse to register a mark (in accordance with the Lanham Act ban) but even then, it does not prevent the trademark application filing party’s use of that mark.
In the U.S. (and other jurisdictions that award trademark rights to parties that are the first-to-use a specific trademark), rights are not gained by way of a registration with the USPTO but through actual and consistent use of the mark on commerce. This means that even if Brunetti (or any other party for that matter) does not register his mark with the USPTO, he still maintains common law (i.e., state law) trademark rights, which he can assert against parties that are using his mark without authorization.
The ban on the registration of “immoral” or “scandalous” marks “simply reflects Congress’s judgment that the federal government should not affirmatively promote the use of graphic sexual images and vulgar terms by granting them the benefits of registration,” U.S. Solicitor General Noel Francisco argued in the USPTO’s petition.
As for Brunetti, he is hardly staying silent. “The scandalous clause is not a content-neutral rule that rejects all profanity, excretory and sexual content,” he has asserted in connection with the Langham Act provision. “Instead, the government is selectively approving or refusing profanity, excretory and sexual content based upon the level of perceived offensiveness.”
