Tag Archives: trademark

What the %@#&? Supreme Court Strikes Down Ban on Immoral or Scandalous Trademarks

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The Supreme Court struck down the Lanham Act’s prohibition on registering “immoral or scandalous” trademarks in its recent decision in Iancu v. Brunetti. Erik Brunetti is an artist who created a clothing line that uses the trademark FUCT. When he sought to register the mark, the U.S. Patent and Trademark Office (“USPTO”) denied his application, citing the Lanham Act’s prohibition on registering trademarks that contain immoral or scandalous matter. It is not hard to imagine that the mark would bring to mind perhaps the most famous four-letter curse word in American culture. Brunetti appealed and argued that the prohibition violates the First Amendment.

The Supreme Court agreed with Brunetti and held that the Lanham Act’s prohibition on registering immoral or scandalous trademarks is unconstitutional because it discriminates on the basis of viewpoint. By way of example, the Court pointed out how the USPTO registered the mark “D.A.R.E. TO RESIST DRUGS AND VIOLENCE” but refused to register “BONG HITS 4 JESUS” because it “suggests that people should engage in an illegal activity [in connection with worship]” and since “Christians would be morally outraged by a statement that connects Jesus Christ with illegal drug use.”

The Supreme Court’s rationale follows the same line of thinking from its decision in Matal v. Tam, two years ago, when the Court held that the ban on registering marks that “disparage” any person living or dead was unconstitutional. In that case, the Court also held that if a trademark registration bar is viewpoint-based, then it is unconstitutional under the First Amendment.

Does this mean that American consumers are likely to see an influx of brand names containing lewd, sexually explicit, and profane slogans? Not necessarily. While the Lanham Act’s prohibition had prevented the registration of immoral or scandalous marks, there is nothing that previously prevented individuals or businesses from using immoral or scandalous marks in commerce and enforcing the mark against potential infringers. Registration simply provides trademark owners with additional, valuable benefits such as the legal presumption of national ownership of a trademark. In other words, the landscape for offensive marks being used in the marketplace is unlikely to change too much, but owners will have an easier time protecting and enforcing these types of marks.

Questions? Let Eric know.

Eric ClendeningEric Clendening is a member of Flaster Greenberg’s Intellectual Property and Litigation Departments. He focuses his practice on intellectual property litigation and commercial litigation, including contract disputes, employment litigation, and other commercial disputes. He also advises clients on protecting and enforcing intellectual property rights online, including the resolution of domain name disputes and matters concerning e-commerce, online speech and conduct, and related intellectual property issues involving trademarks and copyrights.

New NHL Las Vegas Team Issued Initial Refusal for “Golden Knights” Trademarks, But Registration Is Still Possible

The United States Patent and Trademark Office issued an initial refusal to the new NHL franchise in their efforts to trademark “LAS VEGAS GOLDEN KNIGHTS” and “VEGAS GOLDEN KNIGHTS” – citing a likelihood of confusion with the registered mark “GOLDEN KNIGHTS COLLEGE OF SAINT ROSE.”  Each mark was registered for entertainment services (ice hockey exhibitions) and clothing.

Importantly, this is a common initial outcome when applying for a mark that has competitors in the same market using a similar mark.  While some media sites opted for more incendiary headlines in stating that the trademark has been “denied,” registration is still quite possible as the Vegas franchise is now given six months to respond to the Trademark office’s initial refusal.

Sports teams using the same nickname as one another is nothing new.  There are many examples of professional and college teams sharing the same name – e.g. Boston Bruins (NHL) and UCLA Bruins (college).  The Simpsons weighed in on the subject years ago, poking fun at the overuse of “Wildcats” as a team nickname:

To overcome the initial refusal, the Vegas franchise will need to show, among other things, that likelihood of confusion will not be an issue.  One problem is that “GOLDEN KNIGHTS” is displayed in both marks more prominently than any of the other words or descriptors.  In addition, the College of Saint Rose and the Vegas franchise will be using the marks in connection with the same goods and services – sporting events and clothing sales.

Another problem is that the College of Saint Rose registered the mark in connection with a particular design and stylized type face.  The Vegas franchise attempted to register their mark in standard characters, which would allow them to display the words in any design and type face – meaning that the two marks could be presented and displayed in the same manner, a “likelihood of confusion” issue which is explicitly cited by the trademark examiner in the initial refusal.

In response to the Trademark office, the Vegas franchise will most likely cite the numerous examples of professional and college teams sharing nicknames, as well as professional teams in different sports sharing nicknames – e.g. Arizona Cardinals (NFL) and St. Louis Cardinals (MLB).  In this case, it may also be crucial that the College of Saint Rose does not have an ice hockey team.  The Vegas franchise is also likely to disclaim “Las Vegas” and “Vegas” as unregistrable portions of their marks, because exclusive rights cannot be obtained in wording that is primarily geographically descriptive of the origin of the goods or services identified in the trademark application.

It remains to be seen whether the Vegas franchise will ultimately be successful in registering the “GOLDEN KNIGHTS” marks, but the matter is far from over, as the initial refusal is just the beginning.

For more information on registering trademarks and intellectual property law, contact Eric Clendening, a member of Flaster Greenberg’s Intellectual Property Department.

Eric R. Clendening is a member of Flaster Greenberg’s Intellectual Property and Litigation Departments. He focuses his practice on intellectual property litigation and commercial litigation, including contract disputes, employment litigation, and other commercial disputes. He also advises clients on protecting and enforcing intellectual property rights online, including the resolution of domain name disputes and matters concerning e-commerce, online speech and conduct, and related intellectual property issues involving trademarks and copyrights.

 

 

 

 

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