Immoral trademark registrations on hold in the United States

A trademark is a word, phrase or symbol used to identify the manufacturer of a product. A trademark owner is granted certain exclusive rights to a trademark when they use the trademark to identify their goods in the marketplace. The philosophical justification for the existence of trademark rights is to protect consumers from inferior quality goods. Trademark law is based on the assumption that the only trademark worth infringing is a trademark associated with high quality, popular products. Therefore trademark law grants trademark owners the exclusive right to use a trademark to prevent consumers from being confused about the identity of a product manufacturer. If a product manufacturer brands their goods with a trademark which does not belong to them and the misuse of the trademark causes consumer confusion that can be considered trademark infringement. A trademark owner can request an injunction from a court to stop trademark infringement and a trademark owner can get money damages for trademark infringement which has already occurred.

In the United States trademarks owners are granted certain common law rights to a trademark when the trademark is first used to brand goods. A trademark can be registered at the federal level with the United States Patent and Trademark Office to strengthen the rights associated with the trademark and to gain additional rights. The trademark registration process starts with a trademark application, filed by the trademark owner, with the United States Patent and Trademark Office. Upon receipt of the trademark application, the United States Patent and Trademark Office will review the attributes of the trademark and determine if the trademark is eligible for registration.

Trademark law in the United States is based on the Lanham Act. The Lanham Act was adopted as a law in 1946 and has been amended few times. Section 2(a) of the Lanham Act, 15 U.S.C. §1052 defines what may be registered as a trademark in the United States. 15 U.S.C. §1052 is written in a way that instructs the United States Patent and Trademark Office to grant a trademark application unless the trademark is defective in one of a number of different ways. 15 U.S.C. §1052(a) states that a trademark may not be refused registration unless the trademark consists of immoral, … or scandalous matter…. The Trademark Manual of Examining Procedure, which is the manual used by United States Patent and Tradmark employees to examine trademark applications, states that Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), is an absolute bar to the registration of immoral or scandalous matter on either the Principal Register or the Supplemental Register.

While it may boggle the mind why a manufacturer would want their products associated with something immoral, or scandalous, one manufacturer did challenge the rule. Eric Brunetti founded the fuct clothing brand in the 1990s, but decades later was denied a trademark for the label because the United States Patent and Trademark Office found it violated Section 2(a) of the Lanham Act, ban on immoral or scandalous matter. Brunetti challenged the denial in the United States Court of Appeals for the Federal Circuit. Brunetti argued that the word he wanted to trademark was not immoral or that, denying his trademark registration was unconstitutional. The Federal Circuit held that Brunetti mus be granted trademark registration because denying registration would be a violation of Brunetti’s rights under the Free Speech Clause of the United States Constitution First Amendment. In its opinion the Federal Circuit went into detail about how much it did not like the use of vulgar or immoral language but that it was obligated to rule this way.

The Federal Circuit’s decision was published in December of 2017. In May of 2018 the United States Patent and Trademark Office announced it will continue to hold on to and suspend trademark applications containing scandalous or immoral matter, until further notice. The United States Patent and Trademark Office still has an opportunity to appeal the Brunetti decision to the United States Supreme Court. We will have to wait and see if Brunetti is appealed and if the Supreme Court grants certiorari.

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