By: Kenya N. Rahmaan (N.K. Clark)
For anyone who has ever attempted to file for a registered trademark but were denied due to it containing socially unacceptable words or images, the long-standing ban has been lifted. For decades, the law was clear in that a person could not trademark “bad” words considered offensive. According to the law offices of Xavier Morales, the U.S. trademark law absolutely bars trademarking words of immoral or scandalous matter. Because of this law, my application to trademark the slogan ‘Fuck Child Support’ (FCS) was denied when I originally applied in 2015. Due to my inability to register FCS as a trademark and control all of the content associated with the slogan, I discontinued the promotion of the slogan and stopped selling any FCS merchandise.
Not only did I feel that the ban on trademarking profanity infringed upon my right to the sacred first amendment, others felt the same way and acted upon these feelings. Streetwear designer, Erik Brunetti, was denied a trademark and that denial sparked a battle to uphold the right to free speech, even when that speech is applied to a shirt. The denial occurred in 2011 when Brunetti attempted to trademark his brand ‘Fuct’. Andrew Chung (2019) reported that,
The Patent and Trademark Office noted that the brand name sounds like profanity-sometimes politely called the “F-word”-though is spelled differently, and concluded that Brunetti’s products contained sexual imagery, misogyny, and violence.
Little did we know that there would be change on the horizon.
In 2019, the law that had been in effect since 1905 was struck down by the United States Supreme Court. All nine justices agreed in a decision written by liberal, Justice Elena Kagan, that the prohibition of “immoral” trademarks ran afoul on the U.S, Constitution’s right to free speech, (Chung). Of course, overturning this long standing statute was not met without resistance. Chung reported that three justices wrote dissents to say the bar on “scandalous” trademarks should be upheld. The Trump Administration supports the ban and may have concerns that the lift of the ban will provide an unfiltered gateway of profane language/imagery that will flood marketplaces in America. The United States Trademark Office (USPTO) will, more than likely, attempt to appeal the decision based on opposition.
Due to the denial of my original filing of the FCS slogan and my ending the sale of merchandise, unsurprisingly, another party began using the slogan in approximately 2017. The party sells merchandise and is currently awaiting the approval of the trademark registration. The question in this instance arises as to what happens to the original filers and true owners of intellectual property who were denied the trademark due to the ban on profanity law. Surely, there must be some remedy to ensure that rightful owners are returned their property. There are a couple of things that can be executed even after the trademark application has been cleared by the USPTO attorney.
First, you can ask that the person attempting to use your work without your permission to withdraw their application. But in all likelihood and depending on the individual, that request will probably be denied. Next, the originator can file a letter of protest against the trademark applicant. According to the USPTO, a letter of protest is an informal procedure that allows third parties to bring to the attention of the USPTO evidence bearing on the registability of a mark.
Although this process is informal, it may be the first and only stop needed to reclaim your property. Some of the reasons that someone would file a letter of protest, based on the USPTO website, includes:
- likelihood of confusion with a U.S. trademark registration or prior pending application,
- descriptive/genericness of the mark, or
- use of a registered mark in the identification of the goods/services, or false association with the protestor.
Although there are no mentions of the profanity ruling in this criteria, if the ban remains in effect, it would safe to say that this criteria will expand in the near future. It will be interesting to see how the SCOTUS decision molds future trademark disputes concerning profanity denials one.
Additionally, before an applicant can claim full ownership of a trademark, the USPTO must first publish the registration information in its weekly publication, the “Official Gazette”. The publican of this information affords the public the opportunity to voice any objectors to the registration of the pending trademark. Any party who believes that it may be damaged by the registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose, (USPTO).
By opposing the registration and providing evidence to justify the reasons for the opposition, the registration can be denied. That may open up the opportunity to refile a trademark application under the new SCOTUS ruling. As we are aware, it takes longer the implementation of legislative changes than for the actual legislative change. Finally, it wouldn’t be such a bad idea to hire a trademark attorney to assist you with this process. They may be able to offer additional information that you are not privy to as you execute the protest process.
To all who have filed for a trademark and received a denial due to the use of scandalous and/or immoral words, this SCOTUS decision is a monumental step towards upholding First Amendment protections. The Brunetti case is a perfect example of how one person has the ability to fight injustices and obtain groundbreaking changes to the status quo. To be clear, I publicly introduced the slogan ‘Fuck Child Support’ in a posture of resistance to the unconstitutional child support system. Not only is personal because of my advocacy for child support reform important, it is important to stand up to anyone who attempts to intimidate you whether it be over your stance against against an illegal system or over your intellectual property. Even if I am unsuccessful in gaining my trademark for ‘Fuck Child Support’, I am happy to be a part of this colossal decision which adds more protections to our right to free speech.
Chung, A. (2019, June 24). Supreme Court allows foul language trademarks in F-word case. Retrieved from https://www.reuters.com/article/us-usa-court-profanity/supreme-court-allows-foul-language-trademarks-in-f-word-case-idUSKCN1TP1TQ
Morales, X. (2019, October 24). Trademarking profanity | SecureYourTrademark.com. Retrieved January 9, 2020, from https://secureyourtrademark.com/can-you-trademark/mark-containing-bad-words/
United States Patent and Trademark Office. (2019, November 12). Trademark process. Retrieved January 9, 2020, from https://www.uspto.gov/trademarks-getting-started/trademark-process#step1
United States Patent and Trademark Office. (2019, November 1). Letter of protest practice tip. Retrieved January 9, 2020, from https://www.uspto.gov/trademark/trademark-updates-and-announcements/letter-protest-practice-tip