High court strikes down ‘scandalous’ part of trademark law

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The Untied States Supreme Court has struck down a section of federal law that prevented officials from registering trademarks seen as scandalous or immoral, handing a victory Monday to California fashion brand FUCT.

The high court ruled that the century-old provision is an unconstitutional restriction on speech. Between 2005 and 2015, the United States Patent and Trademark Office ultimately refused about 150 trademark applications a year as a result of the provision.

The high court’s ruling means that the people and companies behind those failed applications can resubmit them for approval. And new trademark applications cannot be refused on the grounds they are scandalous or immoral.

Justice Elena Kagan wrote the majority that the “‘immoral or scandalous’ bar is substantially overbroad.”

The Trump administration had defended the provision, arguing that it encouraged trademarks that are appropriate for all audiences.

The justices’ ruling was in some ways expected because of one the court made two years ago. In 2017, the justices unanimously invalidated a related provision of federal law that told officials not to register disparaging trademarks, finding that restriction violated the First Amendment. In that case, an Asian-American rock band sued after the government refused to register its band name, “The Slants,” because it was seen as offensive to Asians.

The latest decision could result in an uptick in requests to the United States Patent and Trademark Office to register trademarks that would have previously been considered scandalous or immoral. But Barton Beebe, a New York University law professor who has studied the provision the justices struck down and co-authored a Supreme Court brief in the case , said he thinks that's unlikely.

Beebe said he doesn't believe there's a large, pent-up demand for trademark registration by people refused it previously under the provision. He said most of the trademarks refused registration under the provision recently were for putting words on clothing.

That was what happened in the case the justices ruled on. Los Angeles-based FUCT — Friends U Can’t Trust — began selling clothing in 1991. Federal officials refused to register the brand's name.

Like other companies denied trademark registration under the scandalous or immoral provision of the Lanham Act, the brand was still able to use the word officials declined to register. It just didn't get the benefits that come with registering a trademark. Erik Brunetti, the artist behind the brand, said that made it difficult for the brand to go after counterfeiters.

The case is Iancu v. Brunetti, 18-302.

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