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The Supreme Court Says Yes to "Seven Dirty Words"

July 1, 2019

The road to permitting the registration of George Carlin's "seven dirty words" began in 2017, with the Supreme Court holding unconstitutional the Trademark Act's prohibition against registration of trademarks which are disparaging.

That decision permitted the registration of the mark "THE SLANTS" for entertainment in the nature of live performances by a musical band. Matal v. Tam, 137 S. Ct. 1744 (2017).

Two years later, on June 24, the Court followed the same path, declaring unconstitutional the ban against registration of a trademark that "consists of or comprises immoral, deceptive, or scandalous matter." 15 USC §1052(a); see also Iancu v. Brunetti, No. 18-302, 2019 WL 2570622, at *2 (Jun. 24, 2019). In addition to "THE SLANTS," the Principal Register will now include "FUCT" for athletic apparel and retail store services, and perhaps many of the other "seven dirty words."

In Tam, the Supreme Court examined the disparagement ban using the lens of free speech, holding that "the government may not discriminate against speech based on the ideas or opinions it conveys." Iancu, 2019 WL 2570622, at *3. Viewpoint discrimination is unconstitutional as it comprises content discrimination: if the Trademark Office determined that the trademark expressed a positive viewpoint, it permitted registration, but if the Office found that the viewpoint was derogatory (SLANTS is not a complimentary term for people of Asian descent), then registration was refused. Accordingly, the Tam Court held that "if a trademark registration bar is viewpoint based, it is unconstitutional. And second, the disparagement bar was viewpoint based." Id. (internal citations omitted).

Brunetti's application for FUCT had been refused by the Trademark Examiner and the Trademark Trial and Appeal Board as a totally vulgar, highly offensive term with negative sexual connotations. Id. The Federal Circuit Court of Appeals reversed the decision, finding that the "immoral, deceptive or scandalous matter" ban on registration was unconstitutional under the First Amendment. In re Brunetti, 877 F.3d 1330, 1357 (Fed. Cir. 2017).

The government argued before the Court that the statutory bar could be upheld if narrowed - the Trademark Office could reject "marks that are offensive [or] shocking to a substantial segment of the public because of their mode of expression, independent of any views that they may express." See Iancu, 2019 WL 2570622, at *2. So, under this view, perhaps the "seven dirty words" would not be permitted registration.

The majority disagreed, finding that the statute as written (banning registration of a trademark that "consists of or comprises immoral, deceptive, or scandalous matter") does not allow for such elegant parsing, with lewd, sexually explicit or profane marks on one side and everything else on the other -- this would require Congress to re-write the Trademark Act. 15 U.S.C.A. 1052(a) (invalidated by Iancu and Tam); Iancu, 2019 WL 2570622, at *2.

Interestingly, in their concurrence and dissent, Justices Sotomayor and Breyer endorsed the government's narrowing construction and would have continued to bar registration of obscene, vulgar and profane trademarks. In their view, it is possible to save the statute by putting these types of marks on one side of the line, the un-registerable one.

The majority was not persuaded: "[o]nce we have found that a law 'aim[s] at the suppression of' views, why would it matter that Congress could have captured some of the same speech through a viewpoint-neutral statute? But in any event, the 'immoral or scandalous' bar is substantially overbroad. There are a great many immoral and scandalous ideas in the world (even more than there are swearwords), and the Lanham Act covers them all. It therefore violates the First Amendment." Iancu, 2019 WL 2570622, at *5 (internal citations omitted).

Will there be a rush to register obscene, vulgar and profane trademarks? Using these marks in their truly expressive and ornamental sense (on the front of a t-shirt or backpack, for instance) is not the same as use in the trademark sense: the very point of a trademark is to be a source indicator. Ornamental use doesn't count; the Trademark Office demands hang tags and labels bearing the product brand. So, applicants must still follow the trademark rules and use Carlin's "seven dirty words" as trademarks if they wish to achieve registration.

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Goldsmith, Amy B. Partner and Co-Chair of Intellectual Property Group Partner and Co-Chair of Intellectual Property Group 212.216.1135 VCard

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