By Tara M. Madison

For over 70 years, the Lanham Trademark Act has banned the federal registration of any trademark comprised of “immoral, deceptive, or scandalous matter” or matter which may “disparage. . . or bring [persons, institutions, beliefs or national symbols] into contempt or disrepute.”  Over the years, the application of the U.S. Patent and Trademark Office’s (“PTO”) discretion in this regard has resulted in the refusal to register marks like KHORAN (wine) and BUBBY TRAP (brassieres), while others such as BUDDA BEACHWEAR (clothing), BADASS (musical instruments), and BIG PECKER BRAND (t-shirts) have been permitted.  This increasing tolerance of edgy trademarks is undoubtedly due, at least in part, to a change in cultural sensitivities over time.

Two recent rulings by the United States Supreme Court and the Federal Circuit Court in 2017 have deemed the Lanham Act’s bars on disparaging and scandalous trademarks to be a violation of the First Amendment freedom of speech.  In Matal v. Tam[1], the United States Supreme Court unanimously struck down the prohibition on disparaging trademarks. At issue in Tam was registration of “THE SLANTS” as a trademark for an Asian rock band.  The PTO had previously refused to register the mark on grounds that it disparaged persons of Asian descent.  The Supreme Court struck down the disparagement clause, holding that trademarks were private speech, not government speech and that speech may not be banned simply because it may offend.  Because the Supreme Court addressed only the disparagement bar in Tam, the Lanham Act’s prohibition against federal registration of immoral and scandalous trademarks remained in force . . . until the Federal Circuit rendered its opinion in In Re: Brunetti[2] several months later.

At issue in Brunetti was the “FUCT” brand for clothing.  Finding the FUCT trademark to be the phonetic equivalent of the “F word,” the PTO denied registration of “FUCT” as a scandalous mark.  Following the reasoning previously applied by the Supreme Court in Tam, the Federal Circuit also struck down the Lanham Act’s restrictions on “immoral and scandalous” trademarks as unconstitutional content discrimination.

It is expected that 2018 will bring a rash of applications for marks that may have been previously deemed disparaging, scandalous or immoral in the pre-Tam and Brunetti world.  One restriction appears to remain.  Under current trademark law, a federal trademark registration can be granted only in connection with goods and services lawfully regulated by commerce.  For now anyway, the “MAKE MARIJUANA GREAT AGAIN” trademark could not be federally registered as a brand of marijuana.

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[1] Matal v. Tam, 137 S.Ct. 1744 (2017).

[2] In Re: Brunetti, 877 F.3d 1330 (Fed Cir.2017).