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Ban on offensive trademarks ruled unconstitutional

On Behalf of | Jul 19, 2019 | Trademark Law

We discussed the issue of the immoral, scandalous or deceptive trademarks back in January when the Supreme Court announced it would hear the case involving the FUCT clothing line’s attempt to trademark its brand and products since 2012. The case (Iancu v. Brunetti) was obviously attention-grabbing with news reports soberly discussing the validity of curse words and explicit imagery, but the case also was a legal clash between the First Amendment right to free speech versus the United State Patent and Trademark Office’s 113-year-old policy and the Lanham Act, which prohibits immoral, explicit or scandalous trademarks.

Final ruling based on viewpoint discrimination

The Supreme Court ruled 6-3 in favor of the clothing line. The Court acknowledged the circuit court’s ruling the correct interpretation of the Lanham Act and agreed with its decision that the law was an unconstitutional restriction of freedom of speech. Justice Elena Kagan wrote for the majority, stating that the Lanham Act provision is viewpoint discrimination instead of viewpoint-neutral. This distinction makes it a violation of the First Amendment.

The rulings implications

The USPTO will likely get a wave of similar applications for similarly controversial marks. Moreover, the justices were concerned that this ruling also leaves open the possibility for Congress to amend the law so that it is subsequently legal to reject applications on a viewpoint-neutral basis. There is also the likelihood that applicants will push the boundaries of branding and marketing campaigns.

Applications benefit from legal guidance

This law may have changed certain criteria the USPTO uses, but it is still smart to consult with an attorney experienced with trademark applications and litigation. Applicants should always do everything possible to ensure they submit a strong application, especially if the mark involves a level of controversy.

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