Findings U Can Trust: ‘Offensive’ Trademarks Return To The Supreme Court

As a SoCal native who came of age in the 1990s, I recall witnessing what appeared to be streetwise youth parading up and down the Huntington Beach pier in Orange County, California, wearing shirts and hoodies bearing the most provocative of phrases. As a youngin who was only on the brink of street wisdom, the garments were eye-catching and nonconformist to the extreme. In what would later become a hilarious and ironic twist, the use of the provocative phrase was often employed as a tweak on famous trademarks, such as Ford’s iconic script logo.

FUCT Clothing, the skate brand I witnesseth way back then, is still alive and kick-flipping, and just this week made an unlikely appearance somewhere that the brand’s founder, Erik Brunetti, could never have predicted back when he was selling t-shirts out of the back of his van.

The justices of the Supreme Court, many of whom no longer spend a lot of time skating, heard oral arguments this week in the case of Andre Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office v. Erik Brunetti, in which the government appealed the Federal Circuit’s approval for federal registration of the FUCT trademark. In an unorthodox move, Brunetti’s counsel, who is in-house at Stussy when not handling game-changing trademark cases, joined in urging the Supreme Court to take up the case.

And take it up they did, despite ruling very recently on a similar issue in Matal v. Tam. In that case, the Supremes made clear that the the statute denying trademarks that may “disparage” any “persons, living or dead,” as set forth at 15 U. S. C. §1052(a), was facially unconstitutional under the First Amendment’s Free Speech Clause. In the Court’s decision, Justice Alito set forth a “bedrock” First Amendment principle: “Speech may not be banned on the ground that it expresses ideas that offend.” That case dealt with an Asian-American musician’s attempt to register “The Slants” as his band name in an effort to reclaim the offensive phrase. The Supremes, citing the above bedrock, found that “disparaging” marks could not be banned and his registration should be granted.

Given the Supremes’ recent decision in Tam, the government faces an uphill battle in establishing that a similar ban against “scandalous” or “immoral” marks is also facially unconstitutional. Just because the government finds the word “FUCT” offensive most likely does not allow it to refuse it registration per the Tam reasoning.

Malcolm Stewart was given the difficult task of challenging the Federal Circuit’s approval of the FUCT registration and was upended by Justice Sotomayor before he could even get out of the box. She criticized the government’s shifting definition of the term “scandalous” in the context of trademarks, which Stewart noted can include “shocking,” “disgraceful,” “offensive,” and “disreputable” marks. But, the subjective nature of these descriptors, and the shifting nature of public mores, makes this approach woefully insufficient.

Everyone in the courtroom avoids saying the actual word that is the source of all the hubbub. Stewart referred to “FUCT” as “the equivalent of the past participle form of the — the paradigmatic profane word in our culture,” which is the most genteel thing of all time, but which does not establish that the community at large would be scandalized by seeing it on shirts. Brunetti, by contrast, has averred that FUCT is an acronym for “Friends U Can’t Trust.”

Justice Breyer engendered an interesting digression by referencing the actual physiological reaction to hearing this paradigmatically offensive word or a racially charged phrase, such as the reddening of one’s face given the rush of blood, but does not tie that response directly to the issue of how to discern what is scandalous and what is not.

It would be very difficult to do so because each person has a different threshold. Justice Ginsburg made the wry observation that younger folks would probably have little reaction, physiological or otherwise, to the word FUCT. She asked, “If you were to take a — a composite of, say, 20-year-olds, do you think that that answer would be they would find it shocking?” Anyone who has read YouTube comments or observed the chat box on a Twitch stream would know that a 20-year-old’s threshold for such things is very, very, very high.

Yet Stewart went on at length about “protecting” our citizens against obscene trademarks before getting shut down by the simple retort that trademarks can be marketed without registration, so denying registration will not ensure that the our citizens do not see product bearing obscene trademarks. Indeed, the FUCT brand itself has been around and corrupting young and not-so-young people for decades.

The Nine also took the government to task for applying the “scandalous” test so unevenly and haphazardly that the same word is accepted in some contexts and rejected in others. As Brunetti’s counsel points out, it hardly makes sense that FCUK and FVCK be granted protection, which has been the case, while his client’s mark be denied the same. Justice Gorsuch also chimed in on this issue, noting that of the “the seven words” that are supposedly scandalous, “there are shocking numbers of ones granted and ones refused that — that do look remarkably similar.”

The Court also expressed consternation for the fact that at times the “scandalous word” is rejected as being confusingly similar with an existing mark. Of course, if a confusingly similar mark has been registered, the “confusingly similar” scandalous mark is not likely to be scandalous.

There is a particular concern about how the Court’s ruling might affect registrations that include obvious hate speech, such as the use of the most horrible of racial slurs. But that issue was seemingly addressed in Tam, where the Court said that the offensive nature of the mark was not enough to deny it registration. Unlike “slants,” however, the most offensive of slurs is obscene as well as offensive, which may be a distinguishing factor. And this is a real concern because a number of applicants have already sought to register this racial slur. The government advised the court that “the PTO views Tam as prohibiting a denial of registration for racial slurs, but, with respect to the single-most offensive racial slur, the PTO is currently holding in abeyance applications that incorporate that word, pending this Court’s decision on — leave open the possibility that that word might be viewed as scandalous.”

This may provide the court with a means to overturn the Federal Circuit. If they find the FUCT mark scandalous then the PTO will retain its right to reject applications that incorporate the most offensive racial slur. But, given Tam, that result is unlikely. The Nine did engage in some contortion in an attempt to avoid its own precedent, by noting, among other things, that the offensive term in Tam “was used ironically for, perhaps, a politically oriented purpose.” But, there didn’t seem to be much heart in this attempt.

And this ruling will be closely watched not only by trademark law hounds, but by business people with real skin in the game, like those that have applied to register the following, each of which is the subject of a live PTO application at the time of this writing: Phat Phuc (wine), Sh*t Sherpa (clothing), Big Ass (online retailing), Phuc (clothing), Swamp Ass (candle torches, whatever those are), SwampAss (without the space, skin care), Good Beer No Sh*t (clothing), and so on.

Clearly, scandal and obscenity sells. The question of whether it should sell with the government’s imprimatur remains to be seen.

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Scott Alan Burroughs, Esq. practices with Doniger / Burroughs, an art law firm based in Venice, California. He represents artists and content creators of all stripes and writes and speaks regularly on copyright issues. He can be reached at [email protected], and you can follow his law firm on Instagram: @veniceartlaw.