CASE 1

-Erik Brunetti, an artist launching his clothing line, had filed a trademark application with the USPTO/
Patent and Trademark office for the term “FUCT”.

-The USPTO denied his application under Lanham Act (US Trademark Law) which prohibits registration of
trademark that consist of immoral or scandalous matter.

-They are saying that the mark of brunetti is equivalent to the past participle of a well known word of
profanity (bad word) which is FUCK.

-However, brunetti said that his mark is pronounced as four letters, one after to other which is F-U-C-T.

PTO CANNOT REGISTER A MARK THAT:

1.Resemblance to another mark as it create likelihood confusion (FUCT/FUCK)

2.Merely descriptive (describes a quality/characteristics of mark’s goods/services.

3.Contains flag/insignia of any nation/state.

4.Disparages (to offend) person, living/dead.

5.Lanham Act- immoral or scandalous matter

-To determine if the mark of brunette fits in the category, PTO ask the general public if they would find
the mark shocking or vulgar.

-The attorney that examines the both PTO (trademark trial and appeal board) concluded that brunette
failed in that test, the attorney determined that FUCT was a total vulgar, therefore it is unregistrable.

-The board also stated that the mark is “Highly offensive” and “Vulgar” and has negative sexual
connotation.

-The board also considered the evidence of how brunette used his mark. They found out that in his
website, near the mark, there is nihilism (Rejection of all religious and moral Principles. Life is
meaningless) and anti-social behavior.

-WITH THAT CONTEXT, BOARD CONCLUDED THAT IF THE MARK HAS SEXUAL TERM, MISOGYNY,
NIHILISM OR VIOLENCE, THE BOARD WILL FIND IT EXTREMELY OFFENSIVE.
All the Justices agreed on two proposition:

First, if a trademark registration bar is viewpoint-based, it is unconstitutional.

Second, the disparagement bar was viewpoint-based.

"Government has no power to restrict expression because of its message"

Viewpoint discrimination occurs when a governmental regulation restricts expression based not only on
its content, but specifically on the underlying views in the message.

DISPARAGEMENT BAR

-Allowed a trademark owner to register a mark if it was positive about a person, but not if it was
derogatory (disrespectful)

FIRST AMMENDMENT:

-No law shall be passed under speech, religion, press, assembly, and the right to petition the
government for a redress of grievances.

-“above all else, the First Amendment means that government has no power to restrict expression
because of its message, its ideas, its subject matter, or its content."

-anyone is legally allowed to express his or her opinion even if it is contrary to the beliefs of
neighbouring citizen or the nation itself.

LANHAM ACT:

-Provides that no trademark may be denied registration on the basis of its nature unless it is immoral,
false, or scandalous.