Iancu v Brunetti (Case No. 18–302, 588 U.S. 2019)
In February 2019, the US Supreme Court ruled that the brand-name ‘FUCT’ should be allowed as a federal trademark, holding that a ban on the registration of ‘immoral’ or ‘scandalous’ trademarks is unconstitutional and violates the First Amendment. The decision guarantees that the freedom of expression is protected and the government cannot discriminate against ideas that may offend them.

The case was brought by U.S. Patent and Trademark Office (USPTO) against Erik Brunetti, founder of the 30-year-old Los Angeles streetwear clothing line ‘FUCT’ (an acronym for ‘FRIENDS U CAN’T TRUST’), who faced rejection of his trademark ‘FUCT’ by the USPTO in 2011. USPTO’s decision was further upheld by the Trademark Trial and Appeal Board (TTAB) in 2014. This lead Brunetti, with the support of the American Civil Liberties Union (ACLU), to appeal the decision at the United States Court of Appeals for the Federal Circuit. While the Federal Circuit concurred with TTAB’s opinion that ‘FUCT’ was a ‘scandalous’ word, it also ruled that the restriction in the Lanham Act against ‘scandalous’ words was unconstitutional. The decision prompted the USPTO, under its director Andrei Iancu, to file a writ of certiorari at the Supreme Court.

Brunetti in his submission asserted that the prohibition of Section 1052(a) Lanham Act on the federal registration of ‘immoral’ or ‘scandalous’ marks violates the Free Speech Clause of the First Amendment. The eight-justice bench of the Supreme Court was divided between two different opinions. On the one hand, the majority opinion (6 Justices), regarded that the “Lanham Act’s prohibition on registration of ‘immoral’ or ‘scandalous’ trademarks violates the First Amendment” and found it to be unconstitutional. Justice Kagan concurring with the majority opinion said that the “immoral or scandalous” bar is an overreach of the Lanham Act. On the other hand, Chief Justice Roberts and Assistant Justices Breyer and Sotomayor, published opinions dissenting with different parts of the majority. Assistant Justice Breyer in his opinion stated that interpreting the “immoral” aspect of the Lanham Act was difficult as the boundaries of “viewpoint discrimination” and “content discrimination” are hard to discern. Although ‘scandalous’ words evoke powerful emotion, the words by themselves do not convey a particular viewpoint.

While the SCOTUS ruling was deemed a “victory for the First Amendment” by some people, others disagreed with the Supreme Court’s opinion on the case. During various oral arguments, several Justices noted that a ruling siding with the ‘FUCT’ clothing line would lead to more “vulgar” trademarks. Chief Justice John Roberts went ahead to call it the “promotion of vulgarity”.

Scenario at the EUIPO
Protection of Brunetti’s ‘FUCT’ trademark in European Union is likely to be rejected for falling under absolute grounds of refusal of the EU Trade Mark Regulation (EUTMR) 2017/1001. Article 7(1)(f) of the EUTMR excludes from registration trademarks that are ‘contrary to public policy or to accepted principles of morality’. Although the regulation does not provide any definition of public policy or accepted principles of morality, these principles are defined in the EUIPO Guidelines. The guidelines and the case T-140/02 (‘INTERTOPS’) provide that whether or not a mark is contrary to public policy or morality must be determined by the intrinsic qualities of the mark applied for, and not by the circumstances relating to the conduct of the person applying for the trademark. Moreover, the guidelines also clarify that trademarks “contrary to accepted principles of morality” are usually of the following types:

• Trademarks which consist of the symbols and names of unconstitutional parties or organizations (prohibited in Germany and in Austria) and symbols of totalitarianism.
• Pejorative, discriminatory, indecent and vulgar signs, if so-called reasonable person with normal levels of sensitivity and tolerance would feel that.

At the EUIPO, trademark registrations are prohibited for all signs that are deemed degrading, vicious or racial. For instance, the General Court of the European Union in 2018 denied the registration of the German expression “Fack Ju Goehte”, the title of a comedy film, which was understood as a misspelling of the offensive expression.

Conclusion
The decisions in US and EU show a marked difference in policymaking and acceptable levels of ‘immorality’. Therefore, when registering marks, care should be taken to ensure that they do not evoke deeply negative emotions in a manner which would be deemed vulgar by a reasonable person. Whether or not the apprehensions regarding the Brunetti judgment are well placed, and it actually opens the ‘floodgates’ for ‘vulgar’ trademarks will be interesting to see.