The internet started out as a vast free speech zone, where Americans were protected by the First Amendment. The same internet is also the backbone to a $700 billion dollar e-commerce economy in the United States. Today, online shoppers can buy virtually anything. Trademarks operate at the junction of these competing pressures by constraining certain speech as it relates to products. Trademarks limit which words can be used with which products, the intention being to protect consumers by providing certainty as to the origin and quality of the goods they buy.
If you sell a branded product or service online, then a trademark attorney will likely urge you to secure a federal trademark registration with the United States Patent and Trademark Office (USPTO). In fact, Amazon now requires vendors to have a federal registration to enroll in Amazon’s free Brand Registry, which helps to prevent online fraud and counterfeit products.
The United States Supreme Court has recently taken a renewed interest in the proper boundaries of trademark law, offering landmark decisions in 2017 and 2019 that required trademark law to be viewpoint-neutral and prohibited trademark law from restricting the moral content of proposed trademarks. This is a short recap of how we got there.
Federal trademark law prior to 2017.
The original intent of Federal trademark regulations was to safeguard not only the integrity of brands, but also the moral sensibilities of the public. The trademark laws, at 15 U.S.C. § 1052(a), precluded federal registration of any trademark that “consists of or comprises immoral, deceptive, or scandalous matter.” This law denied registration for marks having religious connotations, drug references, sexual innuendos, and real or perceived obscenities. However, as the moral norms of society evolved, the tension between the freedoms expected under the First Amendment and the speech restrictions of the trademark laws increased.
The process of registering your trademark is usually straightforward. You apply with the USPTO, and an Examining Attorney decides if your trademark meets the requirements. However, prior to 2019, the Examining Attorney would deny your trademark registration if they believed your branding was immoral, deceptive, or scandalous. You could potentially miss valuable federal trademark benefits and rights based on the moral compass of your randomly assigned Examining Attorney.
As you might imagine, this morality standard was not consistently applied. Take for example the trademark application for “MADONNA” as a brand for wine. The Examining Attorney rejected the mark as too scandalous an association of our Virgin Mary with alcohol. Conversely, a different Examining Attorney approved registration of “AMISH” as a brand of cigars.
The unfairness evident in the unequal application of the morality standard brought attention to a much more fundamental underlying problem: whether morality restrictions—applied uniformly or not—themselves violated the constitutionally protected rights of free speech and expression.
Matal v. Tam, 2017
The Supreme Court began to walk back the ability of trademark laws to limit the First Amendment in Matal v. Tam. Tam is a musician of Asian-American decent. He sought—and was initially refused—a trademark registration for his band’s name “THE SLANTS.” Tam acknowledged that “slants” is a derogatory term for Asian persons, and he intentionally chose the name to lessen its derogatory force. The USPTO denied his application under § 1052(a) for disparaging or bringing into contempt or disrepute any persons living or dead.
In Tam, the Court held that trademark registration criteria must be viewpoint-neutral to be valid. Which is just a fancy way to say the First Amendment does not allow speech to be restricted based on the ideas or perspectives that speech expresses. Writing for the majority, Justice Alito stated, “giving offense is a viewpoint . . . the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.”
Iancu v. Brunetti, 2019
Building on Tam, the Supreme Court made another big change to trademark law in 2019 with its decision in Iancu v. Brunetti. Here, the Court struck down a provision that precluded federal registration of any trademark that “consists of or comprises immoral, deceptive, or scandalous matter.”
In Brunetti, the Examining Attorney refused registration of the trademark for “FUCT,” which Brunetti asserted was the acronym for the slogan “Friends U Can’t Trust.” Arguing before the Supreme Court, Brunetti claimed it is not the government’s job to decide what is “immoral, deceptive, or scandalous.”
The International Trademark Association, along with many other powerful voices in the law, joined the fight on behalf of striking down the morality provisions. The American Intellectual Property Law Association, having 13,500 attorney-members, also submitted a brief arguing the morality provision was unconstitutional.
Notably, even Americans for Prosperity, a group known for their support of conservative values, submitted briefs urging the Supreme Court to strike the morality provision as violative of the First Amendment.
In defense of the challenged provision, the USPTO argued it was an appropriate function of trademark law to permit the registration of only those trademarks that are suitable for all audiences, including children.
In finding the provision unconstitutional, the Court reaffirmed that the government cannot offer or deny protections based merely on whether the government agrees with the speech. Applying that fundamental principle to the trademark provision at issue, the Court held that the registration decision cannot be based on whether the speech accords with society’s sense of decency, propriety, rectitude, or morality.
Trademark registration today
The Supreme Court’s renewed interest in the scope of the First Amendment’s protections has significantly reduced the justifications by which the USPTO can reject an application. Henry Law can help you evaluate your potential marks in light of the evolving legal standards governing registration.