Yes, thanks to the First Amendment. But do you really want to?

Until a few years ago, section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), barred registration for trademark applications that contained either immoral and scandalous matter or matter which may disparage persons, institutions, beliefs, or national symbols. Since the passage of the Act in the 1940s, 2(a) refusals have kept marks containing slurs or curse words from becoming federally registered trademarks. In 2017, the Supreme Court struck down one component of this section on First Amendment grounds when it ruled that rejections based on alleged disparagement of a racial, ethnic, national, or religious group violated free speech protections.

This ruling begged the question of whether refusals based on obscenity, vulgarity, and profanity would similarly violate free speech protections. In 2019, the Supreme Court answered that question when it decided that a trademark application for a word mark that sounded like the F-Word could be registered, despite its alleged profanity.

The Slants performing in September 2016. Photo Credit - Gage Skidmore. Wikimedia Commons

The Slants performing in September 2016. Photo Credit – Gage Skidmore. Wikimedia Commons

In earlier the 2017 case, a Portland, Oregon-based band with a name that may be offensive to many people of Asian descent sought to register its name. Incidentally, the band themselves comprised Asian-American members. The USPTO issued a 2(a) refusal on grounds that the mark would disparage people of Asian descent. The government argued that trademark registrations were not private speech, but rather speech by the government itself. Just as a private individual cannot be compelled by the government to speak, the government, speaking on behalf of all people, should not be compelled to speak for specific individuals by granting federal rights to speech which the populace may find offensive. The Supreme Court unanimously decided that trademark registrations were not government speech, but rather private speech, and even speech that “demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground [which] is hateful” warrants protection under the First Amendment.

A screenshot of a clothing brand's hoodie, the branding is obscured with "SOLD OUT".

Then, in 2019, the Supreme Court issued a divided 6-3 decision for a clothing brand which sought and was refused registration for a mark featuring a homonym (sound-alike) of the F-word. The majority determined that the relevant portions of section 2(a) required the government to participate in viewpoint discrimination by barring registration for marks which some may consider immoral or scandalous, but which others may not. However, it left open the possibility for Congress to intervene by proscribing more narrowly the terms which may be barred from registration on a similar basis. For instance, Congress could pass a law enumerating the specific words, images, or phrases which it deems immoral or scandalous, thereby removing the issue that a viewpoint would interfere with a decision to refuse an application on such a basis.

Regardless of these outcomes, the obvious concerns about offensive and vulgar marks may dissuade businesses from choosing or otherwise such marks. While they may be eye-catching and generate news attention, they may only appeal to a small subset of the population and such publicity is likely to fade. Unless that subset, not offended by or even endorsing the vulgar or offensive mark, is the target market for your goods or services, it may still be advisable not to try to register or market these types of expletives. Additionally, Congress may pass a law that could render such a mark invalid, as long as it is careful to avoid viewpoint discrimination. While such interference with granted rights may constitute a taking under the Fifth Amendment, only monetary damages might be available. The registrant may still lose their mark in that scenario and financial recovery may not fully compensate for such a loss.

Section 2(a) is just one part of the Lanham Act. Other requirements and restrictions may be implicated, depending on the mark you’re using or planning to use. These may pose potential obstacles to those seeking registration of their trademark. The best way to make sure the mark you’ve chosen won’t be barred from registration is to consult with trademark counsel before you file your application with the USPTO. Please contact Grell & Watson Patent Attorneys and Trademark Attorneys for a free consultation.

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