The FUCT brand is a scandal!

After the European Union (and the "FACK JU GÖTHE" case)It is now the turn of the United States to question the validity of vulgar trademarks. On Friday, January 4, 2019, the US Supreme Court agreed to hear the case of Iancu v. Brunetti. In the spring, the judges will therefore have to decide whether or not the USPTO's refusal to register the FUCT mark constitutes an infringement of freedom of expression.  

The ban on outrageous brands in the United States

In the United States, unlike France, trademark registration is not required. It is possible to use an unregistered trademark. But it has many advantages, especially when it comes to defending one's rights. The trademark registered at the Trademark Office (USPTO) thus benefits from certain proof. Once the trademark is registered, it is subject to a control by the USPTO. The Office verifies a number of formal and substantive requirements before proceeding with registration. For example, the trademark may be rejected because of imprecise wording. More rarely, the USPTO will refuse registration on the grounds of vulgarity. This is indeed the case, section 1052 (a) of the Lanham Act (the U.S. trademark law) provides that no trademark may be denied registration on the basis of its nature unless it is immoral, false or scandalous". The USPTO defines outrageous brands as those that a substantial portion of the general public would find "offensive to the sense of decency, truth or propriety, shameful, offensive, dishonorable, disreputable, etc.". ». But the USPTO's assessment depends on the examiner in charge: thus, the FCUK mark could be registered, whereas the FUCT mark was found to be scandalous.  

The FUCT case: does the USPTO's refusal constitute an infringement of freedom of expression?

Erik Brunetti, an artist launching his clothing line, had filed a trademark application with the USPTO for the term "FUCT". The USPTO refused to register the mark on the grounds that "FUCT" is the past form of the verb "fuck". According to the Office, this mark would therefore be likely to offend a part of the public. Mr. Brunetti had argued that his mark was not scandalous. Indeed, FUCT would mean "Friends U(you) Can't Trust". The Commission in charge of deciding the case had nevertheless retained the scandalous nature of the mark. Following this, the artist appealed against this decision. The U.S. Court of Appeals for the Federal Circuit ruled in favor of the artist, citing freedom of expression. For the judges, the prohibition of scandalous and immoral trademarks, as set out in the Lanham Act, is unconstitutional. Indeed, section 1052 would infringe on the 1^er Amendment, since the USPTO's review (and eventual refusal) would be a value judgment - and not a strict and neutral control - on the message carried by the brands. The Department of Justice wishes to overturn this decision. It has therefore referred the matter to the Supreme Court, which is expected to rule on the case within a few months. Even if the question of the infringement of freedom of expression is not upheld, it will be interesting to look at this decision, in order to clarify the issue of scandalous trademarks and perhaps to modernize the Lanham Act, which has already celebrated its centenary.   The question of the immorality of trademarks therefore remains at the heart of the news. It remains to be seen which side of the Atlantic will evolve the fastest.