By: Steve Masur and Cameron Ashby
The Supreme Court recently struck down a federal law that banned trademarking words and logos that are “immoral” or “scandalous”. The court reasoned that this federal requirement for registering marks was a form of viewpoint discrimination against vulgar or offensive marks and thus unconstitutional. As a result, Justice Sotomayor foresees a “coming rush” of trademark applications for vulgar or offensive marks, but that does not mean the U.S. Patent and Trademark Office (USPTO) is powerless to deny these applications on other grounds. Before deciding to register a vulgar or offensive mark for your business, it is important to consider whether the mark is registrable. In other words, the mark must satisfy the function of a trademark and be used lawfully in interstate commerce.
How to make sure your vulgar or offensive mark is a functional trademark
The recent decision in Iancu v. Brunetti has delivered a big win to shock-value brands and extended federal protection to a whole new class of trademarks. Under this new precedent, the USPTO cannot reject an application for a vulgar or offensive mark on the grounds that it is “immoral” or “scandalous”. Although, as multiple Justices in the Brunetti dissent pointed out, this “win” may be short-lived due to new Congressional legislation which could achieve the “immoral” or “scandalous” standard through more precise language.
In the meantime, when attempting to register a vulgar or offensive trademark, you should consider whether the mark truly functions as a trademark or violates any of the other principles of federal trademark law. The USPTO can reject the application if the mark is simply a random vulgar phrase or word printed on a shirt, merely descriptive, or deceptively misdescriptive.
It is important to note when the application is based on “use in commerce” or “intent to use” a specimen must be included. The USPTO, therefore, looks closely at specimens of use attached to the application and can reject it if the specimen seems not to be genuine but prepared simply to support the filing of an application. Additionally, it is required that the mark be shown on the specimen attached and also, shown to be used with the goods or services listed in the application. The USPTO offers a list of requirements in order for a specimen to be accepted, therefore it is imperative that those seeking trademarks consult with a private trademark attorney. The USPTO will not protect a mark that is used in the illegal stream of commerce; for example, cannabis.
How does this affect the industry?
While vulgar and offensive marks are now allowed to be federally registered, not all consumers will be comfortable with shock value branding. If your business does not work in a space where vulgar and offensive marks are considered to be valuable and more “shock” centered, it may be unwise to try and register a vulgar or offensive mark. Simply put, if your business is in the market where vulgar or offensive marks will grow your image, then, by all means, explore as many options as possible. At the end of the day, the market will decide what value vulgar or offensive marks have after Brunetti and consumers will control that value through their patronage.