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High Court Strikes Down Offensive Trademarks Ban

By: Mark F. Warzecha
Widerman Malek, P.L.
Melbourne, Florida

The U.S. Supreme Court ruled Monday, June 24, 2019 that a federal ban on the registration of “scandalous” trademarks such as “Fuct” violates the First Amendment. This comes less than two years after striking down a similar rule against marks deemed “offensive”.

In a 6-3 vote, justices said the provision was an unconstitutional form of discrimination.

The decision went in favor of streetwear founder, Erik Brunetti, and his brand Fuct. In 2011, he had applied to register the company name, however, the USPTO refused on grounds it was phonetically a profane term and was deemed scandalous.

The decision echoed one similar to the Washington Redskins in which the high court cancelled six Washington Redskins trademarks citing that the football team’s name is “disparaging to Native Americans” and thus in violation of federal trademark laws banning offensive or disparaging language. However, this decision has since been deemed unconstitutional as a violation of First Amendment rights.

“Today we consider a First Amendment challenge to a neighboring provision of the act,” Justice Elena Kagan wrote for the majority. “We hold that this provision infringes the First Amendment for the same reason: It too disfavors certain ideas.”

According to coverage of the decision, the USPTO urged the high court to treat the two provisions differently, but the court’s decision said the scandalous bar was just as much a violation of the Constitution.

“The statute, on its face, distinguishes between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them; those inducing societal nods of approval and those provoking offense and condemnation,” Justice Kagan wrote. “The statute favors the former, and disfavors the latter.”

The USPTO has said they are “currently reviewing the decision.” Stay tuned…

Mark focuses his practice exclusively in the areas of Intellectual Property prosecution and litigation. He advises corporations and individuals on their foreign and domestic intellectual property needs. Mark counsels his clients on every aspect of intellectual property protection, policing and enforcement. He manages numerous trademark portfolios both domestic and foreign, including Germany, Japan and South America.

Mark also advises his clients in matters related to Intellectual Property purchases, licensing and developing a strong, revenue generating, Intellectual Property portfolio. He is also a Florida Supreme Court Certified Civil Mediator specializing in Intellectual Property disputes.

The general information contained herein is intended for informational purposes only. It is not intended to be, and should not be construed as, legal advice or legal opinion on any specific facts or circumstances.

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