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Wednesday June 26, 2019

Trademarks: Free Speech Strikes Again

Authored by: Marc J. Belliveau Posted in: Intellectual Property

Two years ago, I blogged about a U.S. Supreme Court (USSC) decision striking down a trademark law (in the U.S. Lanham Act of 1946) prohibiting the registration of “disparaging” words and phrases (the applicant was a rock band branded “The Slants”) because the prohibition was found to unduly restrict “free speech” and was therefore unconstitutional.

The USSC has just done it again. On June 24, it struck down another trademark prohibition against registering “immoral” and “scandalous” words, in this case for the established FUCT brand of clothing.

The case involves Erik Brunetti’s nearly 30-year-old streetwear brand, FUCT, which sounds a lot like the “F” word. In 2011, he applied to register his trademark and the U.S. trademark regulator (USPTO) refused to register it because it was deemed immoral and scandalous. Brunetti appealed and won, so the USPTO appealed to the USSC. The majority of the USSC (6 to 3) found that the prohibition, effectively giving the trademark regulator the subjective power to arbitrarily discriminate against types of speech that it did not agree with (aka “viewpoint discrimination”), was clearly unconstitutional.

To illustrate the subjective and discriminatory process of deciding what viewpoint is immoral or scandalous, the USSC gave vivid examples where trademarks with similar messages (related to religion, drug use and terrorism) had entirely inconsistent outcomes, demonstrating that moral rectitude depends on one’s viewpoint. The USSC has now discarded those unpredictable statutory words, namely immoral and scandalous, into the dustbin of legislative history.

From now on, the USPTO will have no legal basis to reject applications to register trademarks that are obviously immoral or scandalous and will have to allow them. The First Amendment floodgates are fully open for all potty mouth words Americans can possibly imagine for use as trademarks.

In Canada, as I pointed out in my previous blog, we have a similar trademark law which prohibits words and phrases that are “scandalous, obscene or immoral”. At some point, a trademark applicant with sufficient financial resources will similarly challenge that arbitrary and demonstrably variable ban in the courts, claiming an unreasonable restriction on freedom of expression under the Canadian Charter, like the court challenge brought in Nova Scotia concerning government issued personalized (vanity) license plates. It’s simply a matter of time.

Whether one labels it “free speech” or “freedom of expression”, a trademark’s use is commercial communication and deserves constitutional protection. The bigger question remains: should a government confer advantages and legal benefits, such as those available from trademark registration (or a motor vehicle license), to speech and expressions that may not always be in the best public interest. That depends upon your personal viewpoint!

For more information about trademarks, please contact Marc Belliveau.

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