Scandalous as…

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Fuct, a L.A. based clothing brand will be infront of 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.

As the law continues to evolve on these matters, please note that this article is current as of date and time of publication and may not reflect subsequent developments. The content and interpretation of the issues addressed herein is subject to change. Cole Schotz P.C. disclaims any and all liability with respect to actions taken or not taken based on any or all of the contents of this publication to the fullest extent permitted by law. This is for general informational purposes and does not constitute legal advice or create an attorney-client relationship. Do not act or refrain from acting upon the information contained in this publication without obtaining legal, financial and tax advice. For further information, please do not hesitate to reach out to your firm contact or to any of the attorneys listed in this publication.

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