January 9, 2020
Kenya N. Rahmaan (N.K. Clark)
The Supreme Court of the United States (SCOTUS) has lifted the long-standing ban restricting anyone from registering a trademark containing socially inappropriate words or images. For decades, there was a law in place that prohibited a person from trademarking “bad” words that were considered offensive. According to the law offices of Xavier Morales, the U.S. trademark law absolutely barred trademarking words of immoral or scandalous matter. Because of this law, the United States Patent and Tradement Office or USPTO denied my application to trademark the slogan ‘Fuck Child Support’ (FCS) when I initially filed in 2015.
Due to my inability to register FCS as a trademark, I could not control the content associated with my slogan. I, therefore, discontinued promoting the slogan and selling FCS merchandise. Not only did I feel that the ban on trademarking profanity infringed upon my right to the sacred First Amendment, but 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 rejection 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 SCOTUS struck down the preceding law that had been in effect since 1905. All nine justices agreed in a decision written by liberal Justice Elena Kagan that the prohibition of “immoral” trademarks ran afoul of 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 stating that 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 the opposition.
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Based on the denial of the original filing of the trademark registration, unsurprisingly, in approximately 2017, another party began using the slogan. The unnamed party sells merchandise and is currently awaiting approval for trademark registration. The question arises as to what happens to the original filers and actual intellectual property owners who were denied the trademark due to the ban on profanity law. Indeed, there must be some remedy to ensure that the Federal government returns the property to its rightful owners. The USPTO can make a couple of things happen even after the agency attorney has cleared the trademark registration for possible approval.
Based on the denial of the original filing of the trademark registration, unsurprisingly, in approximately 2017, another party began using the slogan. The unnamed party sells merchandise and is currently awaiting trademark registration approval. The question arises as to what happens to the original filers and actual intellectual property owners who were denied the trademark due to the ban on profanity law. Indeed, there must be some remedy to ensure that the Federal government returns the property to its rightful owners. The USPTO can make a couple of things happen even after the agency attorney has cleared the trademark registration for possible approval.
First, you can ask the person attempting to use your work without your permission to withdraw their application. But in all likelihood, and depending on the individual, the submitter would probably deny that offer. 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 registration 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, include:
- 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 be safe to say that these benchmarks will expand soon. It will be interesting to see how the SCOTUS decision molds future trademark disputes concerning profanity denials.
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 publication of this information allows the public to voice any objections to registering the pending trademark. Any party who believes that the registration of the mark may be damaged 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 USPTO can deny the registration request. That may open up the opportunity to refile a trademark application under the new SCOTUS ruling. As we are aware, it takes longer to implement legislative changes than to implement actual legislative changes. Finally, it wouldn’t be such a bad idea to hire a trademark attorney to assist you with this process. They may offer additional information that you are not privy to as you execute the protest process.
This SCOTUS decision is a monumental step towards upholding First Amendment protections to all who have filed for a trademark and received a denial due to the use of “scandalous” and “immoral” words. The Brunetti case is a perfect example of how one person can 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 this victory personal because of my advocacy for child support reform, but it is also essential to stand up to anyone who attempts to intimidate you, whether it be over your stance against an illegal system or 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 that adds more protections to our right to free speech.
References:
Chung, A. (2019, June 24). The 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