Following a United States Supreme Court decision in 2017 that struck down as unconstitutional portions of a 70-year-old law banning the U.S. Trademark and Patent Office from granting trademarks for phrases that contain “offensive” words, SCOTUS earlier this month agreed to take up another case that, if the court rules the same way, could do away with the ban altogether.
The 1947 law known as the Lanham Act governs how trademarks are registered, but it contains two clauses that allow the U.S. Trademark and Patent Office to deny trademarks on names or phrases that contain words judges to be either “disparaging” or “scandalous.”
The 2017 ruling, and the upcoming ruling in this year’s case, Iancu v. Brunetti, affect the adult entertainment industry directly, for the obvious reason that porn brand names are likely to contain “offensive” terminology, according to an article by adult industry lawyer Larry Walters.
“For decades, any effort to seek a trademark registration containing an immoral or offensive term would be routinely rejected by the USPTO under Section 2(a) of the Lanham Act, which prohibits such registrations,” Walters wrote. “That means, any brand names that include words like ‘Fuck’ or ‘Cock’ or ‘Pussy’ would be routinely denied – particularly when the association with adult products or services was obvious.”
In the 2017 case, the lead singer of the Asian-American rock band The Slants sued after the trademark office denied a trademark to his band name on the grounds that it was “disparaging” to Asian persons. But in a unanimous vote, the Supremes ruled that the trademark office was wrong, and that the “disparagement clause” violated the First Amendment’s guarantee of free speech.
But Iancu v. Brunetti directly challenges the “scandalous” clause of the Lanham Act. In the case, artist Erik Brunetti attempted to register a trademark for a clothing line he branded “FUCT,” but was denied by the USPTO, which said that the term was in violation of the Lanham Act’s “scandalous" clause.
The government, when the case came to an appeals court, argued that Brunetti’s free speech rights were not violated, because he remains free to call his clothing like “FUCT” or anything else he wants—but the government is not obligated to provide trademark protection for his “scandalous” brand name, according to a Washington Post account.
But Brunetti’s lawyers have responded that the trademark office makes what amount to arbitrary judgment calls in applying the “scandalous” standard, noting that while “FUCT” was denied, a trademark had earlier been approved for a brand called “FCUK.”
After the “Slants” decision, Walters wrote, adult industry execs apparently expect that the “scandalous” clause will be thrown out as well, because “a search of the USPTO database shows dozens of applications for brand names that include the words ‘Fuck’ and/or ‘Pussy.’ However, most of them were submitted only within the last year or so, and almost all remain in the pending stage.”
All of those applications are now on hold, as the USPTO waits for a ruling in the “FUCT” case—a ruling expected later this year, with oral arguments likely to take place in April.
Photo By Fred Schilling, Collection of the Supreme Court of the United States / Wikimedia Commons Public Domain
