The Moral Morass of ‘Offensive’ Trademarks

Jul 10, 2019 | Blog

One could reasonably make the argument that the right to free speech under the First Amendment of the Constitution is one of the most fundamental American principles in existence. That being said, there is often a contentious and shifting debate about if and where the government should draw a line. Should it curb the free expression of certain ideas that will likely be offensive to many? And if so, who gets to decide what’s considered “offensive”?

On Monday, June 24th, the Supreme Court struck down a decision denying the registration of a trademark due to its perceived profane nature. Erik Brunetti, owner of the Los Angeles-based streetwear brand “FUCT” (an acronym for “Friends U Can’t Trust”), had his original trademark application denied by the U.S. Patent and Trademark Office (PTO) under a provision of the Lanham Act.

Scripted in 1946, the Lanham Act is the predominant federal statute governing U.S. trademark laws. The Act states that no trademark can be refused registration due to its nature unless it consists of or comprises 1) immoral, deceptive, or scandalous matter or 2) matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute [§ 2 (15 U.S.C. § 1052)].

This provision makes some degree of sense in the context in which it was written. America in the 1940s and 50s was still very censorship heavy, to the point where portrayals of toilets, pregnant women, and “naked” cartoon characters in the media had to be skirted around carefully or cut out altogether. But while media censorship laws largely evolved over time and in conjunction with changing societal ideas of what was and wasn’t acceptable, trademark law remained relatively unchanged in this regard until 2017.

In the 2017 case Matal v. Tam, a rock group, all of whose members were Asian-American, sought to have their controversial name—The Slants—trademarked after originally being denied by the PTO. The PTO rejected the application due to the mark’s sensitive racial nature, citing the Lanham Act’s provision prohibiting trademarks that disparage persons, institutions, beliefs, etc.

The Supreme Court, however, held that trademarks are “private speech” and as such are protected under the First Amendment. Trademarks can therefore not be denied registration because they express a certain viewpoint. The Opinion of the Court stated: “The disparagement clause denies registration to any mark that is offensive to a substantial percentage of the members of any group. That is viewpoint discrimination in the sense relevant here: Giving offense is a viewpoint.” This ruling effectively dismantled the latter half of the Lanham Act’s offensive trademark provision, allowing The Slants to trademark their band name.

It’s no great surprise then that the recent Iancu v. Brunetti case involving the aforementioned controversially labelled clothing brand reached a similar conclusion. Brunetti’s trademark was originally rejected by the PTO under the first clause of the Lanham provision that prohibits the registration of marks deemed “immoral or scandalous.” Once again, however, the Court concluded that determining whether something is “immoral or scandalous” is entirely viewpoint-based and cannot be decided upon objectively by the PTO or a court. The Opinion of the Court pointed out that, historically, the PTO has been susceptible to favoring certain views over others in its allocation of trademarks:

“This facial viewpoint bias in the [Lanham Act] results in viewpoint discriminatory application. The PTO has refused to register marks communicating ‘immoral’ or ‘scandalous’ views about (among other things) drug use, religion, and terrorism. But all the while, it has approved registration of marks expressing more accepted views on the same topics.”

The Court ruled in Brunetti’s favor, agreeing that the Lanham provision disfavored certain ideas over others and thus infringed upon his right to free speech.

In separate dissenting opinions, however, three of the Justices argued that the Lanham Act should be interpreted and applied more narrowly, focusing on trademarks that use offensive modes of expression rather than those that merely promulgate offensive ideas. This would mean that a trademark could not be rejected because of a viewpoint it expressed but could be rejected if it used profanity, lewd material, or explicit images to express its viewpoint.

But, as Justice Elena Kagan pointed out in the Opinion of the Court, the Lanham Act makes no such distinction between ideas and modes of expression. And for the court to create such a distinction would be to create a new law entirely.

Among those dissenting was Justice Sonia Sotomayor, who voiced concerns that the overruling of the Lanham Act provision would open the floodgates for a slew of vulgar and offensive trademarks. To her point, rulings such as these can indeed prove to be double-edged swords.

Take the Matal v. Tam case for instance. Whereas the ruling allowed a group of Asian-Americans artists to successfully re-appropriate what had traditionally been a racial slur, it’s easy to conceive of situations where such slurs or other sensitive content could be trademarked and used by groups to harmful ends. Indeed, the Matal v. Tam case was effectively the ruling that allowed the Washington Redskins football team to retain their trademark despite a decades-long battle with Native American activists who sought to ban the NFL team’s racially charged moniker.

However, there’s something to be said about the court of public opinion in these cases. Although there is now no law prohibiting “scandalous or immoral” trademarks, there is also no law mandating that stores must carry the products of or consumers must patronize companies with controversial trademarks. Consumer behavior itself is often the predominant regulator when it comes to what is and what isn’t acceptable. Just ask television star and business mogul Kim Kardashian, who was forced to rename her new line of shapewear (originally dubbed “Kimono”) just one week after its unveiling because of the intense public backlash over concerns of cultural appropriation.

It can sometimes be difficult to reconcile the right to free speech with certain, often personally-held moral values, especially when the two are in direct conflict with each other. The recent rulings on these issues, however, have largely indicated that the government will not play the part of moral compass in such instances, but will instead let the public social consciousness decide for itself what it will allow and what it will condemn.

If you have any questions regarding the registering of trademarks, please contact Maurice Ross or Randall L. Rasey.