Written By David Karl Gross

A trademark registered with the National Trademark Registry can be an effective way to protect a unique and clever name, slogan, or logo. The Registry, an agency of the federal government, is guided by the Lanham Act, which establishes the rules and regulations for protecting the owner of a federally-registered mark.  Once a trademark is issued, no other person can use that same mark and it will grant the holder of the trademark the ability to file a trademark infringement action.

Under the Lanham Act, there are a number of restrictions on what can and cannot be a trademark.  For example, a mark cannot contain a flag or insignia of any nation and it cannot be merely a description of goods.  Nor is a mark that consists of an “immoral or scandalous matter” permitted.  In determining whether a mark is “immoral or scandalous,” the Registry considers whether the general public would see the mark as being “disgraceful, offensive, disreputable, or vulgar.”  Recently rejected applications for trademarks have included, “YOU CAN’T SPELL HEALTHCARE WITHOUT THC” and “MARIJUANA COLA,” because the Registry concluded that such marks would be offensive, as they promote drug use.  Conversely, marks with an anti-drug stance, including “D.A.R.E. TO RESIST DRUGS” and “SAY NO TO DRUGS,” have been approved.

The subjective nature of such determinations, which appear to have evolved with changing societal norms, is that it can be in conflict with Constitutional protections afforded to free speech under the First Amendment.   The United States Supreme Court recently took up this issue in Iancu v. Brunetti.  In that case, Erik Brunetti, an artist and entrepreneur, applied for a trademark for the following mark: “FUCT,” which was the name of his clothing line.  The Registry denied his request for a trademark on the basis that “FUCT” was “totally vulgar” and had “decidedly negative sexual connotations.”  Brunetti challenged the constitutionality of the government’s denial of his trademark on the basis that such a decision violated his right to free speech under the First Amendment.

Finding in favor of Brunetti, and holding that the Lanham Act’s prohibition against the registration of “immoral or scandalous” trademarks infringed the First Amendment, the Court reaffirmed the general notion that the government cannot discriminate based on the content of ideas or opinions.  In reaching this 6-3 decision, a number of the Justices recognized that this decision could result in the registration of trademarks that many would deem patently offensive, including racial epithets and sexually explicit terms.  Justice Alito, however, reiterated the importance of the First Amendment stating, “it is especially important for this Court to remain firm on the principle that the First Amendment does not tolerate viewpoint discrimination.”

Cases reviewing the First Amendment which repeatedly recognize the protection of “ideas that offend,” acknowledge that it is a cornerstone tenant of our democracy.  However, as the Court signaled in its decision that some restrictive legislation regarding the prohibition of obscene or lewd trademarks could be permissible and survive a constitutional review, it is likely that the debate will continue.