Trademark Registration Confront a Freedom of Expression Challenge at the Supreme Court

Most intellectual property news do not surface to the mainstream media and stay in the realm of niche business and IP news.

But periodically, an IP story captures the media’s attention. This is the case of FUCT, a clothing line which is fighting a trademark registration rejection all the way to the Supreme Court.

On Monday, April the 15th, 2019, the clothing line accused the U.S. Patent and Trademark Office of acting unconstitutionally when denying to grant trademark protection to the brand FUCT which sounds like the “F” word.

You can read the story published here, here and here.

The clothing line, created by Erik Brunelli, is a millennial-center offering of hoodies, loose pants, shorts, and T-shirts, which display the brand name prominently.

FUCT is an acronym for “Friends U Can’t Trust,”

Brunelli has been unsuccessful to obtain a registered trademark since 2011 due to the USPTO’s federal statute that bars trademark protection for “immoral,” “shocking,” “offensive” and “scandalous” words.

He claims that USPTO refusal to trademark the brand has cost him a lot of money since many others are using the brand in products that are selling through eBay, Amazon, etc.

Since he does not have a trademark registration of the brand, he cannot go after copycats and shut them down.

The name of the brand posed a challenge to the Supreme Court proceedings, since the Supreme court Judges and the Deputy Solicitor General tiptoed around the name of the brand without saying it.

Deputy Solicitor General Malcolm Stewart referred to the brand name as a “profane past participle form of a well-known word of profanity and perhaps the paradigmatic word of profanity in our language.”

During the proceedings, inconsistencies in the policy were highlighted: “FUCT” has not been granted trademark registration, but “FCUK” did, and so did the well-known brand “FUBAR.” The word “crap” was registered in a trademarked name 70 times, but the S-word was consistently denied.

Supreme Court judge Ruth Bader Ginsburg inquired if “20-year-olds generally find “FUCT” to be shocking or scandalous”.

Being a mother of millennials, I would said that RBG is correct in her questioning.

“The USPTO may have to adjust to times, or create a more consistent policy in banning offensive words,” said intellectual property and business attorney Marcos E. Garciaacosta. “This is not the only case where refused trademarks on the same grounds have made it all the way to the Supreme Court. Profanity is in the eye of the beholder and it depends on cultural and linguistic frameworks.”

The Supreme Court is expected to decide this dispute in the summer.

Marcos E. Garciaacosta is a Business and Intellectual Property Attorney and has filed thousands of Trademarks with USPTO. He can navigate the intricacies of registering a trademark nationally and globally. Our law firm offers personalized and expert services.

Call us for an appointment at (480) 324-6378.

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