US Supreme Court rules in favour of streetwear brand in dispute with USPTO

The highest court in the US, the Supreme Court (“SCOTUS”), has ruled in favour of Erik Brunetti’s streetwear brand ‘Fuct’ in a case brought by the United States Patent and Trade Mark Office (USPTO) objecting to the mark’s registration. We have previously reported in this matter here.

The case started in 2011 when Brunetti was denied a registration for ‘Fuct’ by the USPTO on the basis that the mark was “immoral” and “scandalous” as per the provisions in the Lanham Act (“the Act”), the law which governs trade marks in the US. Brunetti argued that the provisions in the Act are an unconstitutional restriction on free speech. The US Court of Appeal sided with Brunetti in 2017 stating that while ‘Fuct’ was “scandalous”, its restriction would be a violation of the First Amendment which protects every US citizen’s freedom of speech and expression even if that expression is offensive to the public.

However, the USPTO did not accept the Court of Appeal decision and requested that SCOTUS consider whether the Act was unconstitutional due being contrary to the First Amendment.

The USPTO argued that the Act’s ban on the registration of “scandalous” marks is not contrary to the First Amendment because it only restricts what can be formally registered and does not restrict signs which are merely used as trade marks. Brunetti’s counsel counter-argued that in deciding what is offensive the USPTO may prefer some views over others and that “viewpoint discrimination” is not a valid reason to refuse an application.

SCOTUS sided with Brunetti in its majority 6:3 decision, opening the door for other marks that might previously have fallen foul of the “scandalous” or “immoral” provisions, to potentially be registered in the US.

If you have any questions on the above, please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or legal@mcdanielslaw.com.