The case involved a dispute over a trademark application filed back in 2011 for the clothing line “FUCT” (pronounced as the individual letters F-U-C-T).  The United States Patent and Trademark Office (USPTO) refused to register the trademark for the brand stating that the mark was a vulgar term and was banned from registration under section 2(a) of the Lanham Act.  The Act essentially allowed the government (in this case, the USPTO) to impose its views about what is moral and suppress those that it, in its sole discretion, deemed distasteful.   

Fortunately, the majority of the Court found that USPTO cannot exercise this discretion.  It held that the “immoral or scandalous” ban discriminates on the basis of viewpoint, and therefore runs afoul of the First Amendment.  The Court cited many examples of this discrimination, including the USPTO’s refusal to register Bong Hits 4 Jesus while granting trademark protection for a game called “Praise The Lord” and a line of clothing called “Jesus Died For You.” 

This ruling comes almost two years after a similar case involving Asian-American rock band, the Slants, wherein the Court held that clause of the Lanham Act that banned “disparaging” marks also violated the First Amendment.  

With the recent strike downs in the law, we are likely to see a slew of interesting trademarks being registered with the USPTO.  Additionally, it is also almost certain that the next test of the USPTO’s discretion will be on its handling of marks for cannabis products. 

Intellectual property, including trademarks, can be incredibly valuable assets and are key to protecting against infringement.  If you are launching a new brand or product, be sure to work with an experienced intellectual property attorney to ensure you don’t get FUCT by competitors.

However, the band is likely singing the Supreme Court’s praises because just this week the Court ruled in an 8-0 onion that this “disparagement clause” violates the First Amendment. The government’s arguments in support of the clause fell flat, and Justice Alito wrote that “[i]t offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” Thanks to the unanimous ruling, The Slants will likely be able to register their name once and for all.

This is not only good news for the rockers, but for other groups and businesses seeking to protect and profit from their names, brands, etc., as well. This is particularly true for the Washington Redskins. Relying on the disparagement clause, the USPTO canceled the NFL team’s trademarks after over 40 years of registration due to complaints by members of the Native American community. The team should now be able to reclaim its rights to the marks for good.

Intellectual property, including trademarks, can be incredibly valuable assets and are key to protecting against infringement. If you are launching a new band, brand, or product, be sure to work in concert with an intellectual property attorney to keep your business humming along.