U.S. Supreme Court Throws Out Federal Curb on Vulgar Trademarks

(Bloomberg) -- The U.S. Supreme Court said owners of vulgar and lewd product names can get federal trademark protection, ruling that a century-old restriction on those rights violates the constitutional free-speech guarantee.

Siding Monday with the creator of a clothing line known as “FUCT,” the justices threw out a federal law that banned the inclusion of “scandalous” and “immoral” trademarks on a government registry that provides nationwide legal benefits.

Writing for six justices, Justice Elena Kagan said the ban unconstitutionally discriminated on the basis of viewpoint. She said the U.S. trademark office had rejected applications for “Agnus Dei,” or Lamb of God, for a safe, and “Madonna” for wine, on the grounds they would offend most Christians. The office approved “Praise the Lord” for a game and “Jesus Died for You” on clothing.

She said officials had refused to protect trademarks praising al-Qaeda but allowed one that said, “War on Terror Memorial.”

“Of course, all these decisions are understandable. The rejected marks express opinions that are, at the least, offensive to many Americans,” Kagan said. But “a law disfavoring ideas that offend discriminates based on viewpoint, in violation of the First Amendment.”

The Trump administration defended the ban, saying the provision didn’t curb private expression. The government argued that artist and designer Erik Brunetti, who owns the FUCT clothing line, is free to use the label but doesn’t have a right to have it on the federal registry.

Federal registration gives trademark owners protections on top of the rights 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.

‘Aid and Comfort’

Chief Justice John Roberts and Justices Stephen Breyer and Sonia Sotomayor issued partial dissents, all saying the court should have narrowed the part of the law barring “scandalous” trademark registration so that it didn’t discriminate on the basis of viewpoint.

“The First Amendment protects the freedom of speech; it does not require the government to give aid and comfort to those using obscene, vulgar, and profane modes of expression,” Roberts wrote.

Sotomayor said the federal trademark office now “will have no statutory basis to refuse (and thus no choice but to begin) registering marks containing the most vulgar, profane, or obscene words and images imaginable.”

Justice Samuel Alito said in a concurring opinion that Congress could pass a “more carefully focused statute” that would preclude registration of vulgar trademarks. Alito said the word suggested by Brunetti’s clothing line “generally signifies nothing except emotion and a severely limited vocabulary.”

But Alito also said viewpoint discrimination is “poison to a free society” and increasingly under fire.

‘Remain Firm’

“At a time when free speech is under attack, it is especially important for this court to remain firm on the principle that the First Amendment does not tolerate viewpoint discrimination,” he wrote.

The U.S. trademark office suspended consideration of vulgar and lewd marks during the court fight. Among those on hold were applications by the all-women music groups Pussy Riot and Thunderpussy over their band names. Miramax LLC is awaiting word on its bid to register “bad mother f---er,” without the hyphens, for use on Pulp Fiction-themed goods.

The decision upheld a federal appeals court ruling that said the law was unconstitutional.

The case was a follow-up to a 2017 Supreme Court ruling that threw out a similar ban on disparaging trademarks. Although that decision was unanimous, the justices splintered in their reasoning, leaving the exact implications unclear.

Critics of the vulgarity ban said it couldn’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.”

The Justice Department declined to comment.

The case is Iancu v. Brunetti, 18-302.

To contact the reporter on this story: Greg Stohr in Washington at gstohr@bloomberg.net

To contact the editors responsible for this story: Joe Sobczyk at jsobczyk@bloomberg.net, Laurie Asséo

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