"There is only one thing in the world worse than being talked about," Oscar Wilde once wrote, "and that is not being talked about." Entrepreneurs and business owners often take this sentiment to heart, pushing PR buttons with edgy or controversial brand and product names. But can you push it too far?
The Patent and Trademark Office denied Erik Brunetti a trademark application for his streetwear brand FUCT, citing a federal provision that prohibits registration of trademarks that consist of or comprise immoral or scandalous matter. Brunetti challenged the decision on First Amendment grounds, and won. The Supreme Court just ruled that the "immoral or scandalous" bar to trademark applications is invalid. So Brunetti's brand is not FUCT after all.
Only Half of the Story
The biggest issue for the Court, and opinion author Justice Elena Kagan, was the First Amendment's prohibition on viewpoint discrimination. In other words, the government can't allow speech on one side of a debate while restricting it on the other. In this case, Kagan determined that the Lanham Act's ban on immoral and scandalous trademarks fell into this category:
It is viewpoint-based. The meanings of "immoral" and "scandalous" are not mysterious, but resort to some dictionaries still helps to lay bare the problem. When is expressive material "immoral"? According to a standard definition, when it is "inconsistent with rectitude, purity, or good morals"; "wicked"; or "vicious." Or again, when it is "opposed to or violating morality"; or "morally evil." So the Lanham Act permits registration of marks that champion society's sense of rectitude and morality, but not marks that denigrate those concepts. And when is such material "scandalous"? Says a typical definition, when it "giv[es] offense to the conscience or moral feelings"; "excite[s] reprobation"; or "call[s] out condemnation." Or again, when it is "shocking to the sense of truth, decency, or propriety"; "disgraceful"; "offensive"; or "disreputable." So the Lanham Act allows registration of marks when their messages accord with, but not when their messages defy, society's sense of decency or propriety. Put the pair of overlapping terms together and the statute, on its face, distinguishes between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them; those inducing societal nods of approval and those provoking offense and condemnation. The statute favors the former, and disfavors the latter. "Love rules"? “Always be good"? Registration follows. "Hate rules"? "Always be cruel"? Not according to the Lanham Act's "immoral or scandalous" bar.
FUCT and Freedom of Speech
With that bar removed, small businesses are free to name themselves and their products just about anything, unless their names violate other Lanham Act prohibitions on marks that are deceptive, "falsely suggest a connection with persons, living or dead," or use wine regions other than where the wine came from.
While small business owners have more freedom to make sure they are being talked about, trademark law can still remain tricky. Contact an experienced intellectual property attorney or help filing trademarks for your small biz.