L.A. Streetwear Brand Tests Limits of Language in Trademark Case

Streetwear brands have a long history of placing parody and anti-authoritarian viewpoints on T-shirts.

But when the U.S. Patent and Trademark Office deemed the name of the Los Angeles FUCT brand too immoral and scandalous for trademark protection, brand owner Erik Brunetti took his case to the U.S. Supreme Court and won.

In a 6–3 decision handed down June 24, Supreme Court justices ruled that the brand could register its name, FUCT (Friends U Can’t Trust), with the Patent and Trademark office because it did not break a provision of the Trademark Act of 1946, also known as the Lanham Act. This provision bars registration of a trademark when it is considered “immoral or scandalous.”

Writing the opinion for the majority, Justice Elena Kagan said that the provision creates a bias based on viewpoint and therefore violates the First Amendment.

“If the ‘immoral or scandalous’ bar similarly discriminates on the basis of viewpoint, it must also collide with our First Amendment doctrine,” Kagan wrote.

She also noted that the Lanham Act did not specifically draw the line at lewd, sexually explicit or profane trademarks.

In a statement, FUCT’s attorney, John R. Sommer, wrote that the decision gets the government out of the business of deciding what language is moral and immoral. “The Supreme Court, and many Americans, are uncomfortable with Brunetti’s trademark. But that is not the question. The question is whether any government gets to impose its views about what is moral and suppress those it finds distasteful,” he wrote.

In a dissenting opinion, Chief Justice John G. Roberts, along with justices Sonia Sotomayor and Stephen Breyer, argued that the ban on “scandalous” trademarks was constitutional when read to cover trademarks that were vulgar and obscene.

Roberts said that core free-speech rights were not threatened because no one was preventing Brunetti from using the controversial logo, just denying his right to get a trademark for the brand.

“The government…has an interest in not associating itself from trademarks whose content is obscene, vulgar or profane. 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.

Brunetti in 2011 wanted to file for trademark protection to prevent others from knocking off his brand. The trademark, he thought, would strengthen his position if he wanted to sell the brand, according to “Vice News.”

The market will eventually decide whether goods and services bearing trademarks with profane words will be big sellers, said trademark attorney Doug Lipstone of the law firm Weinberg Gonser LLP.

More than anything, the recent decision reflects changes in society and the interpretation and application of laws. “The Trademark Act was not enacted to allow censoring of the marketplace,” Lipstone said. “However, it was reflective of the time when it was enacted. But as society changes, the way that the Trademark Act allows applications to be rejected has been seen as functioning to censor free speech. This is because those decisions can be based upon the personal interpretations of the individual examining attorneys at the Trademark Office.”

Social mores on what is acceptable change over time. “Tell me what ‘immoral’ means,” Lipstone said. “And should an examining attorney at the trademark office make that determination?”