Trademark registrations now available to those in any industry after First Amendment cases strike down prohibitive “immoral or scandalous” law.

Trademark registrations now available to those in any industry after First Amendment cases strike down prohibitive “immoral or scandalous” law.

“Sure, you can trademark that”

These words are more true than ever, following two Supreme Court cases that struck down a law that prohibited trademark protection for “immoral or scandalous” marks.

Until those cases, the Lanham Act, which is codified as 15 U.S.C. 1051 et seq., prohibited registration of any trademark that:

“Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” (See, 15 U.S.C.A. § 1052).

On June 24, 2019 the Supreme Court held in Iancu v. Brunetti, 588 U.S. ____(2019) that the blocking of any applications because they were “immoral or scandalous” violated the First Amendment of the U.S. Constitution. The case involved the application for FUCT, covering clothes. The case follows the Supreme Court’s ruling in Matal v. Tam that refusal of an application because it is “disparaging” was also unconstitutional.

In short, an application should not be refused based on “ideas that offend.” The practical effect of this is that anyone’s trademark registration may no longer be refused because it is offensive.

The floodgates are open, and not long after Iancu, savvy trademark applicants pounced, for example:

● On September 25, 2019, Wood Rocket, LLC filed an application for “Fuck Me” for vibrators. (The application is refused as a common phrase).

● On August 1, 2019, A Little to the Left Productions, LLC filed for “Go Fuck Yourself” for lingerie.

● On October 5, 2019, Rear Axle Wear, LLC filed for “Fucking Hot” for Sex toys (and pants etc.)

● On October 21, 2019 Quierdo LLC filed for “Cute Little Fuckers” for adult toys.

Even film company Miramax is jumping into the fray. On October 29, 2019, Miramax filed for “Pussy Wagon” for keychains, although on January 30, 2020, the examiner is refusing registration, claiming that the mark is a slogan and doesn’t function as a mark. Prior to the new Supreme Court cases, the refusal would have been based on the “immoral and scandalous” prohibition. That was the exact basis under which “Pussy Wagon Productions” was refused in 2019, just before the new cases held such refusals were unconstitutional. It is all about timing.

The effect is that there are fewer hurdles for any business in any industry to getting hard-earned trademarks registered.

The days are gone when a business owner needs to consider whether his or her enterprise will offend, though one must still wonder, despite the new cases above, whether there will be some limits. Until then, it is an uninhibited ® -Fest.

Christian Martinez
Intellectual Property Attorney
www.redbridgelaw.net

By |2020-03-20T10:43:11+00:00February 19th, 2020|Uncategorized|0 Comments

About the Author:

Leave A Comment

This site uses Akismet to reduce spam. Learn how your comment data is processed.