When’s a brand too scandalous to trademark?
That’s a question the Supreme Court will soon decide in a case that tests the constitutional limits of free speech.
I attended the oral argument on April 15, when lawyers representing streetwear clothing label FUCT argued the company has a right to register its brand as a trademark, which helps protect against copycats. The United States Patent and Trademark Office had rejected it on the grounds that FUCT is “immoral” and “scandalous.”
As a trademark attorney and scholar, I believe it’s time the U.S. stopped enforcing an impossible-to-apply moral standard in trademark law – as it has in many other legal domains. Here’s why.
An outlaw ethos
It is perhaps appropriate that this case arose from a streetwear label famous for testing the limits.
While it’s commonplace today for clothing labels to adopt a provocative ethos and image, FUCT founder Erik Brunetti was a trailblazer of edgy streetwear fashion when he started the company in 1990. The name was meant to embody the company’s outlaw image – a corporate-looking logo with an anti-authoritarian pronunciation and subversive message.
A popular style involved prints of the brand name in the font style of the Ford logo, which can be found on T-shirts and hats. The brand quickly became a cultural icon, with its gear worn by skateboarders, punk rockers and even members of the band Nirvana.
As the popularity of the label grew, it engendered fake FUCT merchandise. In order to protect his mark more effectively around the world, Brunetti applied to register it with the U.S. Patent and Trademark Office in 2011.
Trademark registration confers significant benefits, including nationwide protection from confusingly similar products, enhanced monetary damages in litigation and priority for foreign filings. It also enables U.S. Customs agents to stop counterfeit goods from entering at the border.
In rejecting Brunetti’s application, examiners argued he ran afoul of a more than century-old provision in trademark law.
‘Offensive to the conscience’
The prohibition on registration of immoral and scandalous trademarks has been in existence since Congress passed the Trademark Act of 1905. It says any mark that “consists of or comprises immoral or scandalous matter” will be rejected.
Today, scandalous is defined as “shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation.”
I and other scholars have long questioned the wisdom of having the trademark office as an arbiter of a collective and ever-evolving moral standard. That’s because trademarks serve a valuable function in the marketplace by identifying the source of a good or service, helping consumers trust where something they buy comes from and preventing deception.
What matters is source quality – not moral quality.