Can Your Business Adopt a Tradename that Others May Deem “Offensive”?

The answer may very well be a resounding, “Yes,” insofar as it relates to trade names and trademarks. Recently, the United States Supreme Court in Ioncu v. Brunetti ruled that a business could brand (and register) its line of clothing and accessories using the name, “FUCT”, a name that certainly the USPTO in the past would have rejected.

For decades, trademark attorneys have been advising their clients that if they want to obtain a federal trademark registration, one of the requirements is that the applied-for name may not be “immoral” or “scandalous” per the Lanham Act. The Supreme Court struck down this provision of the Lanham Act as unconstitutional. Justice Kagan authored the opinion, stating that the law may not engage in “viewpoint discrimination”, meaning that the law should not support the USPTO’s decision when it either supports a moral or positive term for a proposed trademark, or refuses one that it believes is vulgar or offensive.

Now, it appears that business owners need not be as concerned that their proposed mark is “immoral” or “scandalous”. So long as the application meets the other requirements of registration (i.e., is not confusingly similar to another prior registration, does not incorporate the name of a living or deceased person without his or her permission, does not geographically misstate the origin of the product, etc.) the proposed mark should be certified for registration.

The Brunetti case is not the first in which the U.S. Supreme Court rejected criteria based on vulgarity or immorality. As the 2017 Matal v. Tam case illustrated, the Court determined that the Asian-American band had the right to call themselves, and receive a registration for, “The Slants”, an otherwise traditionally offensive, derogatory slang term.

While business owners may now have more latitude in choosing names for their company and their products, however, the USPTO imposes other requirements to obtain a trademark registration that can be complicated.

If you are considering filing your mark for U.S. trademark, or have any questions regarding your marks, please contact Levin Ginsburg at (312) 368-0100.