STACY J GROSSMAN

Dirty Words - The Trademark Office Can't Stop Them!


by Stacy J. Grossman,

 

Fans of the late George Carlin certainly know his famous monologue, “Filthy Words,” which featured Carlin’s list of 7 words you can never say on television. 
 
A radio broadcast featuring these seven “dirty words” led to FCC v. Pacifica Foundation, a landmark U.S. Supreme Court decision that defined the extent to which the federal government could regulate speech on broadcast television and radio in the United States.  The guidelines established by Pacifica continue to apply today, more than 40 years later: the FCC continues to prohibit obscene, indecent and profane content from being broadcast on the radio or TV between 6 a.m. and 10 p.m., when there's a reasonable risk that children may be in the audience.  Notably, content distributed on cable or the Internet – the type of content most consumed by children – is not subject to the same restrictions!
 
In a departure from the government’s prohibition of indecent content broadcast on air, the Supreme Court recently struck down a provision of the trademark law that prohibited the registration of scandalous and immoral trademarks.  
 
Los Angeles based designer Erik Brunetti launched FUCT clothing in 1990.  The brand grew in popularity, and Brunetti applied to register FUCT as a trademark in 2011.  The Trademark Office refused to register the mark.  It was not persuaded by Brunetti’s assertion that FUCT is an acronym for “Friends U Can Trust”, and instead found that FUCT was the phonetic equivalent of the word “fucked” and, therefore, an “immoral or scandalous” mark not eligible for registration.  Brunetti challenged this holding, all the way to the Supreme Court.  

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In Iancu v. Brunetti, the Court held ruled that Section 2(a) of the Lanham Act, which prohibits the registration of any mark that “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” violates the First Amendment and is unconstitutional.  
 
The Court found that viewpoint bias is unconstitutional and to rule otherwise would “allow registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety.” 
 
As Justice Alito’s concurrence notes, “at a time when free speech is under attack, it is especially important for this Court to remain firm on the principle that the First Amendment does not tolerate viewpoint discrimination.” However, he makes clear that that the “decision does not prevent Congress from adopting a more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas.”
 
The Brunetti decision follows Matal v. Tam, a 2017 decision in which the Supreme Court unanimously struck down a related provision of § 2(a) that prohibited registering marks that “disparage.” In Tam, the founder of an all-Asian American dance-rock band “The Slants” applied to register THE SLANTS as a trademark. The Trademark Office denied registration on the ground that it would disparage persons of Asian descent.  The Supreme Court held that the bar against “disparaging” marks was viewpoint-based and thus unconstitutional, violating the bedrock First Amendment principle that the government cannot discriminate against “ideas that offend.”
 
We’re waiting to see whether Congress amends the Lanham Act to resolve these issues – though Congress has its hands full these days.  In the meantime, there will likely be an increase in the grant of registrations of marks that were previously thought, by some, to have been disparaging, immoral or obscene.  And maybe some anti-establishment prime-time broadcast television characters will start wearing FUCT shirts.  :-)