Supreme Court to hear challenge to ban on profane trademarks

[January 05, 2019]  By Jan Wolfe

WASHINGTON (Reuters) - The U.S. Supreme Court on Friday agreed to decide whether a federal law that blocks trademarks for brand names or logos bearing profane words or sexual imagery violates free speech rights in a case involving a clothing brand called "FUCT."

The justices will hear the U.S. Patent and Trademark Office's appeal of a lower court decision that the agency should have allowed fashion designer Erik Brunetti to trademark the "FUCT" brand name, which sounds like, but is spelled differently than, a profanity.

At issue is a provision of U.S. trademark law that lets the trademark office deny requests for trademarks on "immoral" and "scandalous" words and symbols, and whether the law violates the guarantee of free speech enshrined in the U.S. Constitution's First Amendment.

Trademark registrations enable entrepreneurs and companies to protect their brands and bring lawsuits against copycat products.

The Supreme Court in 2017 unanimously struck down a similar ban on derogatory trademarks in a case involving a Asian-American dance-rock band called The Slants, also on First Amendment grounds. That case involved a law blocking federal trademarks for messages that may disparage people, institutions, beliefs or national symbols.

The Patent and Trademark Office in 2014 denied a request by Brunetti for a trademark on FUCT, saying the trademark would be perceived as equivalent to the profanity it sounds like. Brunetti appealed to the U.S. Court of Appeals for the Federal Circuit in Washington, which found that the ban "impermissibly discriminates based on content in violation of the First Amendment."

The Supreme Court in Washington, U.S., November 13, 2018. REUTERS/Al Drago/File Photo

The agency asked the Supreme Court to review that decision, arguing that "the First Amendment does not prohibit Congress from making vulgar terms and graphic sexual images ineligible for federal trademark registration."

The agency argued that, unlike the ban on disparaging trademarks struck down by the high court in 2017, the provision relating to vulgar terms was "viewpoint neutral" and therefore lawful.

The high court's willingness to hear the new case suggests some of the justices are receptive to that argument, said Sarah Burstein, a professor of intellectual property law at the University of Oklahoma. Burstein said the high court has provided limited legal protections for obscene material in other contexts.

"I'm very skeptical the court took the case just to pat the Federal Circuit on the head and say, 'Job well done,'" Burstein said.

A Patent and Trademark Office spokesman declined to comment.

John Sommer, a lawyer for Brunetti, did not immediately respond to a request for comment.

(Reporting by Jan Wolfe and Lawrence Hurley; Editing by Will Dunham)

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