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By S. Brandon Owen

Legal Foundations of Trademark Registration

The process of obtaining a trademark is governed by U.S. law and allows individuals or companies to register phrases, words, and symbols as trademarks. Anything that distinguishes a company’s assets from those of another company qualifies as a trademark and, if it meets the necessary criteria, can receive protection by law.

Under the Lanham Act, which was established in 1946, the U.S. Patent and Trademark Office (PTO) administers a federal registration system for trademarks. Lanham Trade-Mark Act §§ 1, 2, 15 U.S.C.A. §§ 1051, 1052.

The Lanham Act prohibits certain items from receiving official trademark registration and legal protection. These items include but are not limited to marks similar to ones that are already registered and marks that are “merely descriptive” of the goods on which they are used. Historically, the list of excluded items included trademarks designated as “immoral” or “scandalous”. Lanham Trade-Mark Act § 2, 15 U.S.C.A. § 1052(b) § 1052(a) § 1052(e).

Supreme Court Decision

On June 25, 2019, the Supreme Court struck down a federal law restricting the registration of “immoral” or “scandalous” trademarks in a 6-3 decision, Iancu v. Brunetti. The Court said legally deeming a trademark “immoral” or “scandalous” contradicts the First Amendment’s protection of free speech.

The trademark decision arose after the United States Patent and Trademark Office (“USPTO”) rejected Erik Brunetti’s trademark application for the word “FUCT” for use on a clothing line finding the mark was “highly offensive” and “vulgar.” In its opinion, the Supreme Court acknowledged that the mark could be described as “the equivalent of [the] past participle form of a well-known word or profanity.”

Nonetheless, the Court found the law barring it from federal trademark registration unconstitutional because it “disfavor[ed] certain ideas.” The Court gave examples of government officials outlawing certain trademark ideas and allowing for others—a reflection of how bias can lend itself to calling a trademark “immoral” or “scandalous”.

The First Amendment does not allow the government to discriminate against speech based on the ideas or opinions it conveys. U.S. Const. Amend 1. According to the Supreme Court, the law prohibiting “scandalous” or “immoral” trademarks violates the First Amendment because designating something as such forces lawmakers to draw distinctions based on speakers’ viewpoints.

Dissenters of this Supreme Court ruling fear that the decision will allow for the protection of profane and even racist trademarks.

Five justices—a mix of liberals and conservatives— including Clarence Thomas, Ruth Bader Ginsburg, Samuel A. Alito JR., Neil M. Gorsuch and Brett M. Kavanaugh, joined Justice Elena Kagan in her majority opinion.

RQN Resources:

Issues related to trademarks can be challenging for companies to navigate. Ray Quinney & Nebeker has an experienced legal team that specializes in trademark & copyright registration and in trademark enforcement and is ready to help clients find solutions. The team is well versed in both the historical foundations and current decisions regarding trademark registration and enforcement.

For more information on resources please refer to Our Practices and our Intellectual Property Page.