What constitutes a “scandalous” trademark? The United States Patent and Trademark Office (USPTO) has been grappling with this question since the enactment of the 1905 Trademark Act, later codified in the 1946 Lanham Act, which forbids registration of any mark that “[c]onsists of or comprises immoral . . . or scandalous matter.” Since the creation of this provision, the USPTO has regularly rejected marks for being “scandalous.” Now, after the 6-3 Supreme Court opinion issued on June 24, 2019, the USPTO will no longer be the arbiter of what constitutes a “scandalous” mark.
In 2017, when the Supreme Court issued its historical decision allowing the federal registration of “disparaging” trademarks in Matel v. Tam, many thought the holding would also encompass so-called “scandalous” marks. Just months after the Supreme Court’s ruling on “disparaging” marks, the Federal Circuit struck down the “scandalous” trademark ban on similar grounds, and, in doing, so overruled the Trademark Office’s refusal to register the mark FUCT for an apparel company in In re Brunetti. Continue Reading