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October 15th, 2018

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Seeking a vulgar trademark? Better wait for Supreme Court review

Susan Decker

By Susan Decker Bloomberg

Published August 10,2018

Seeking a vulgar trademark? Better wait for Supreme Court review
If you want a trademark containing some of the late comedian George Carlin's "words you can never say on television," you'll have to wait.


The U.S. Patent and Trademark Office has placed suspensions on trademark applications that contain "scandalous or vulgar" words while it considers whether to ask the Supreme Court to look at the issue.


An appeals court in December ruled that fashion designer Erik Brunetti could get a trademark on the word "Fuct," overturning a rejection by the trademark office, in a decision that eliminated the agency's ability to reject scandalous marks. The trademark office, in a filing Tuesday, said it hasn't decided whether to file a high court petition and asking that it have until Sept. 7 to make a decision.


In the meantime, the all-women music groups Pussy Riot and Thunderpussy are awaiting word on whether they can get a government-issued registration for their band names, and Miramax films is on hold for its application for a trademark on Pulp Fiction-themed goods with the words "Bad Mother F*cker," without the asterisk.


Less well known people are seeking registration for phrases generally not said in public company. A Kennebunkport, Maine, company, doing a play on President Donald Trump, was able to obtain a trademark on the phrase "tiny hands bleep!-grabbing" for a urinal, but a request for a similar trademark using the president's actual word was left hanging.


Trademarks are designed to identify the origin of a product, a sort of consumer protection aid. Companies can name themselves or their products anything they want and it's only local standards that may deter someone from using a vulgarity. A federal registered trademark gives additional legal protection, including the presumption that the trademark is valid and the ability to seek damages or court orders halting sales of knockoff goods.


"There are an infinite number of trademarks in use, but only a few million registered," said Stephen Baird, a trademark lawyer with Winthrop & Weinstine who specializes in trademark law.

The trademark office has been loath to be seen as giving the government's blessing to offensive words, but it's been inconsistent in application. While it rejected Brunetti's application, it did allow one for FCUK by the clothing company French Connection.


The Supreme Court last year struck down a prohibition on trademarks for disparaging words, ruling that an Asian-American band called The Slants could get a trademark on its name. That ruling also meant the end of efforts by Native Americans to cancel registered trademarks for the Washington Redskins football team.


The U.S. Court of Appeals for the Federal Circuit, in ruling in the Brunetti case, cited that high court decision for saying vulgar or scandalous trademarks can be allowed as well under the First Amendment, though Baird said the Brunetti ruling was "so much more sweeping" than the Slants case.


Scandalous, the trademark office says, means "shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable" as well as "giving offense to the conscience of moral feelings."


There's always the chance that the trademark office will put other roadblocks in front of applications even if the "scandalous" standard goes away, like saying that the trademark doesn't really identify the source of a good or service, or that it's only an ornamental use.


And there's no indication the ruling has led to a rise in applications for what many would consider hate speech, Baird said. One reason -- you have to pay the application fees and show you actually are using the trademark.


"You have to pay a $225 filing fee," Baird said. "That's taking it a step further than just sending a nasty tweet."

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