Sorting Fuct from Fiction – US Supreme Court decision of the registration of profanities

Designer Erik Brunetti’s line has been given a green light after justices agree ban blocks free expression. Justices came to that conclusion after the designer Erik Brunetti’s fashion line ran into trouble with the US patent and trademark office (PTO), which registers product names. Brunetti was seeking a trademark for his brand, FUCT, which he says is pronounced letter by letter. (The brand’s Twitter bio suggests it stands for “friends U can’t trust.) But the trademark office wasn’t thrilled with the branding and turned down Brunetti’s registration, under a law banning “immoral or scandalous matter”. In the words of PTO authorities, FUCT was “a total vulgar”.

Yesterday, the US Supreme Court gave its decision on the registration of the FUCT brand as a trade mark in respect of clothing.

The applicant had applied to register the name of its existing clothing brand FUCT as a trade mark in the US but the initial application was refused by the USPTO on the grounds that the proposed mark was scandalous and immoral. The decision was challenged by the applicant on the basis that the ban on registering the mark was an impediment to his free speech. In giving its the decision, the US Supreme Court accepted that the trade mark will be read (at least by some) as a reference to a swear word, but by deciding which trade marks where immoral the USPTO was discriminating on the “basis of viewpoint”. This follows a similar decision of  the US Supreme Court in relation to disparaging marks given in relation to an application of “The Slants” made by the Asian-American front man of the band of the same name.

The case can be contrasted with the registration of FCUK by French Connection, which was challenged in 2006 on the grounds that it was contrary to public policy or accepted principles of morality. In that case the UKIPO decided that a registration of the word ‘Fuck’ would not generally be acceptable to the public (and the use of that word was also prohibited by the Advertising Standards Agency).  That point was not challenged before Arnold QC (acting as an Appointed Person) and was consistent with the earlier rejection of the trade mark ‘FOOK’. However, the registration of FCUK was allowed on the basis that it was not itself a swear word.  Whilst it could be used in a way which evoked the swear word (and the applicant had used it in such a manner), this did not mean that the mark should necessarily be revoked.  The USPTO also allowed FCUK to be registered as a mark in the US.

The latest decision from the US Supreme Court is a further relaxation of the rules around the registration of contentious and scandalous marks in the US.  It is doubtful that any trade mark registry will now be flooded with marks containing profanities, but brands seeking to maintain a rebellious edge will no doubt see how far the boundaries can be pushed not only in the US but in the UK and other countries.

For any IP and/or trademark-related advice, please contact Ross Waldram on 0207 822 2222 or [email protected]

https://www.theguardian.com/law/2019/jun/24/fuct-fashion-supreme-court-strikes-down-trademark-office-ruling