What’s In a Name? The Supreme Court Will Decide in ‘FUCT’ Trademark Dispute

April 16, 2019 by Dan McCue

Perhaps it should have been docketed as the case that dare not speak its name.

At least that’s how it seemed Monday when the U.S. Supreme Court convened to hear arguments on whether the First Amendment’s protection of freedom of speech extends to words and symbols the U.S. Patent and Trademark Office has deemed “immoral” and “scandalous.”

The underlying case involves a Los Angeles artist and entrepreneur named Erik Brunetti, who sells t-shirts and other apparel online under the four-letter brand “FUCT,” which he claims is an acronym for “Friends U Can’t Trust.”

In interviews Brunetti has said his 19-year-old clothing line is all about challenging “the assumptions of society, the government and accepted wisdom.”

But as he prepared to have his case heard by the high court, the message on his official website was both more succinct and more challenging. “Fuct is free speech,” said red and white letters before white background. “Free speech is fuct.”

Somewhat amazing over the course of hour-plus oral arguments Monday, the justices and the attorneys appearing before them managed to debate the case without uttering the disputed word.

Instead, Deputy Solicitor General Malcolm Stewart referred to it as the “past participle form of a well-known word of profanity,” and everyone else seemed content to follow his lead.

Brunetti founded his clothing line in 1990, but it wasn’t until 11 years later that two other individuals filed an intent-to-use application for the mark FUCT, assigning the application to Brunetti.

The examining attorney at the Patent and Trademark Office refused to register the mark under Section 2(a) of the Lanham Act, finding that because the pronunciation of “fuct” sounds like a vulgar word, the requested trademark was comprised as immoral or scandalous matter in violation of the section.

Brunetti requested reconsideration and appealed to the Trademark Trial and Appeal Board, which affirmed the examining attorney’s refusal to register the mark.

The Federal Circuit later found that while the board did not err in concluding the mark should be excluded under Section 2(a) of the Lanham Act, that section’s bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech.

But in a petition for writ filed last September, the Solicitor General argued the case merited U.S. Supreme Court review because the Federal Circuit’s decision invalidated an act of Congress.

The Solicitor General’s office went on to say that while Brunetti has a right to use the scandalous mark in commerce, he has no comparable right to require the government to register the term or inscribe the term on the Federal Register.

The 1946 federal trademark law says the government should reject registering words or symbols that are “immoral” or “scandalous,” the office noted.

“This is not a restriction on speech, but a valid condition on participation in a federal program,” Deputy Solicitor General Stewart said Monday.

But John Sommer, the attorney representing Brunetti said the provision of the Latham Act in question should be struck down because it is overly broad.

“There is a substantial amount of speech that is improperly refused under this provision,” he said.

He also noted that the Patent and Trademark Office was being inconsistent in its application of the law, having for years registered trademarks that involve some variations of late comedian George Carlin’s famous “seven dirty words” while rejecting others.

This inspired Justice Neil Gorsuch to interrupt to say, “I don’t want to go through the examples, I really don’t want to do that,” a statement that caused the chamber to erupt in brief laughter.

But Justice Elena Kagan appeared to agree with Sommer’s point. She said she too believes the law to be overly broad, because it “includes things that are offensive because of the ideas they express.”

“If Congress wants to pass a statute that’s narrower, that’s focused on vulgarity or profanity, then Congress can do that.”

Justice Stephen Breyer meanwhile questioned the wisdom of opening the door to authorizing “the racial slur we all know about” and other vulgar words as official trademarks.

“Why doesn’t the government have a right to say: ‘This is a commercial matter, purely commercial.’ Why can’t the government say we don’t want to be associated with this?” he asked. “That doesn’t forbid anyone from using the word.”

That’s an issue the justices have grappled with before. Two years ago, they ruled in favor of an Asian band that called itself the Slants and struck down the part of the trademark law that prohibited the use of “disparaging” words.

“Speech may not be banned on the ground that it expresses ideas that offend,” Justice Samuel Alito Jr. wrote for the majority in Matal vs. Tam.

The Federal Circuit based its ruling for Brunetti in part on the U.S. Supreme Court’s ruling in Matal.

Justice Ruth Bader Ginsburg questioned why the word at issue was deemed to be shocking. “If you were to take a composite of, say, 20-year-olds, do you think that … they would find it shocking?” she said. “Suppose in the niche market where these goods are aimed, the word is mainstream.”

Stewart, the government lawyer, said the trademark office had to take into account the views of the broader public who would see the brand.

Alito worried about the effect of voiding the law. “What is going to happen with whatever list of really dirty words still exist and all of their variations? There’s going to be a mad scramble by people to register these marks. And the ones who get there first are going to have exclusive” use of them as trademarks, he said.

Justice Sonia Sotomayor appeared to share Alito’s concerns.

“Let’s deal with the basic question: Why can’t the government say, ‘No, we’re not going to give you space on our public registry for words that we find are not acceptable’?” she said. “We don’t want vulgar, profane, sexually explicit or other words” as registered trademarks.

Throughout the argument, the justices sounded unsure as to what words, if any, could be rejected as trademarks if the law were struck down.

“How is a reasonable citizen supposed to know?” Gorsuch asked. “What notice do they have about how the government is going to treat your mark?”

The justices did not indicate how quickly they will rule on the case, though it is expected they will hand down their decision before the end of their current term in June.

The case is 18-302 Iancu v. Brunetti.

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