Trademark applicants are finally seeing forward progress on their applications formerly deemed “immoral or scandalous” after the Supreme Court’s June 2019 decision in Iancu v. Brunetti. Prior to the Brunetti decision, there was a high degree of inconsistency at the United States Patent and Trademark Office (USPTO) as each USPTO examining attorney’s personal definitions of “immoral” and “scandalous” came into play. Applicants faced an impossible-to-predict standard when filing trademarks that could be considered even remotely off-color. However, thanks to the Supreme Court’s decision in Brunetti, this type of subjectivity is no longer permitted in the examination process.
On April 4, 2020, Seattle-based female hard-rock group Thunderpussy was victorious in finally obtaining a federal trademark after five years. Originally formed in late 2013, the band filed for the federal registration in May 2015 for “[e]ntertainment services by a musical artist and producer, namely, musical composition for others and production of musical sound recordings.” A few months later, the USPTO examining attorney rejected the mark, asserting the name Thunderpussy was a vulgar term and citing to, inter alia, the user-driven website urbandictionary.com.
The band’s attorney argued that the USPTO has granted over 40 trademark registrations for marks that contain the word “pussy” or a variation of that word and that across all the evidence submitted in support of the band’s application, nothing could be considered "immoral or scandalous." Further, the Federal Circuit had just expanded free speech protections of applicants seeking to register names for which some people might find offensive in In re Simon Shiao Tam, which was also noted by the band’s attorney. Subsequently, the USPTO suspended trademark prosecution, not in light of Tam, but instead in light of In re Brunetti, another Federal Circuit case examining the propriety of rejecting applications for marks considered “immoral or scandalous” under Section 2(a) of the Lanham Act.
Opening the door to potential unconstitutionality of Section 2(a), Tam laid the foundation for Brunetti. In Tam, the Supreme Court determined that the disparagement clause set forth in Section 2(a) of the Lanham Act was a violation of the First Amendment’s Free Speech Clause. Matal v. Tam, 137 S.Ct. 1744 (2017). However, the Supreme Court did not explicitly extend its ruling into other portions of Section 2(a), namely, the “immoral” and “scandalous” sections.
The proverbial baton was passed and picked up in Brunetti, in which the applicant sought federal registration of the trademark FUCT, which the USPTO denied on the basis of being “immoral or scandalous.” Delivering the opinion for the Supreme Court in June 2019, Justice Kagan wrote “[v]iewpoint discrimination doomed the disparagement bar. If the ‘immoral or scandalous’ bar similarly discriminates on the basis of viewpoint, it must also collide with our First Amendment doctrine.” 139 S.Ct. 2294, 2299 (2019). Justice Kagan further noted a wealth of marks inconsistently granted registration that were debatable "immoral or scandalous." Id. at 2300-01.
The statute as written does not draw the line at lewd, sexually explicit, or profane marks. . . . It covers the universe of immoral or scandalous—or (to use some PTO synonyms) offensive or disreputable—material. Whether or not lewd or profane. Whether the scandal and immorality comes from mode or instead from viewpoint. To cut the statute off where the Government urges is not to interpret the statute Congress enacted, but to fashion a new one.
Id. at 2301-02.
In conclusion, Justice Kagan stated the bar is “substantially overbroad,” and “[t]here are a great many immoral and scandalous ideas in the world . . . and the Lanham Act covers them all. It therefore violates the First Amendment.” Id. at 2302.
Six months later, the USPTO approved the THUNDERPUSSY trademark to be published for opposition, and the USPTO issued a certificate of registration on the Principal Register on April 4, 2020. Undoubtedly, this Urban Dictionary entry will not be the last mark now passing muster at the USPTO.
If you have any questions about how this ruling may affect your trademarks, please contact your Taft attorneys or a member of our Trademark practice.