Supreme Court Justices Signal Divide on Vulgar-Trademark Rights

(Bloomberg) -- U.S. Supreme Court justices seemed divided as they considered a law that bars the federal government from granting legal protections to trademarks that officials find to be lewd or vulgar.

Hearing arguments Monday in a case centering on a clothing line known as "FUCT," the justices considered striking down a century-old provision that bars the inclusion of “scandalous” and “immoral” trademarks on a federal government registry. The case is a follow-up to a unanimous 2017 ruling that threw out a similar ban on disparaging trademarks.

Critics of the vulgarity ban say it can’t be applied consistently. The U.S. Patent and Trademark Office rejected the "FUCT" application, but separately allowed registration of “fcuk,” “wtf is up with my love life?!” and “fword.”

"How is a reasonable citizen supposed to know?" Justice Neil Gorsuch asked. "What notice do they have about how the government’s going to treat their mark?"

The justices and lawyers scrupulously avoided speaking the disputed word during Monday’s hour-long session, at times using cumbersome language in its place. Justice Department lawyer Malcolm Stewart said "FUCT" was "the equivalent of the profane past participle form of a well-known word of profanity and perhaps the paradigmatic word of profanity in our language."

Some justices tried to find a way to let federal officials reject a limited number of highly offensive words. Justice Stephen Breyer said "FUCT," or at least its phonetic equivalent, was one of a handful of terms known to trigger an especially strong physiological response and become lodged in a person’s memory.

‘Niche Market’

"Most people know what words we’re talking about," he said.

Justice Ruth Bader Ginsburg questioned whether the word was necessarily offensive. She said the word might be "mainstream" in the "niche market" being targeted by Erik Brunetti, the creator of the clothing line. Brunetti describes his clothes as “street fashion.”

"These goods, as I understand it, are meant to attract a particular market, and if we concentrate on that market, from their perception, the word is mainstream," Ginsburg said.

But Chief Justice John Roberts raised the example of a person walking through a shopping mall wearing a "FUCT" shirt with children present. The shirt’s owner is "not the only audience" Brunetti reaches, Roberts said.

Federal registration gives trademark owners protections on top of those they already have under state law. Registration can confer exclusive rights in parts of the country where no one was already using the name or image, help owners win lawsuits, and put would-be competitors on notice that a trademark is legally protected.

Roberts said government registration of the disputed trademark "will facilitate its use in commerce."

The Trump administration is defending the ban, saying that Brunetti is free to use the FUCT label but doesn’t have the right to claim the legal benefits of federal registration.

The 2017 ruling on disparaging trademarks was a victory for an Asian-American dance-rock band called The Slants. Although the eight justices taking part splintered in their reasoning, all said the provision was a form of unconstitutional viewpoint discrimination.

Brunetti’s lawyer, John Sommer, said the vulgarity rule similarly targeted disfavored viewpoints. That assertion drew resistance from Justice Samuel Alito, who said the word that sounds like Brunetti’s clothing line is rarely used to express what it literally means.

"It’s just used to say, ‘I’m mad. I want to get attention.’ It’s like shouting," Alito said. "Can that be distinguished on the ground that it doesn’t express any sort of viewpoint? All it expresses is an emotion, a way of expressing something."

The court will decide the case by June. The case is Iancu v. Brunetti, 18-302.

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