WASHINGTON—A disputed trademark that is pronounced the same way as a vulgar swear word constitutes speech that should be protected by the government on First Amendment grounds, a lawyer for a clothing designer told the Supreme Court.
The hour-long oral arguments on April 15 took on a surreal air as justices performed a kind of linguistic ballet, carefully avoiding saying the trademark aloud.
The U.S. Patent and Trademark Office (PTO) rejected a trademark application for the word “F**T” (letters omitted) by clothes-maker and artist Erik Brunetti, who has said F**T stands for “Friends U Can’t Trust.”
The designs include shirts, hoodies, and jackets.
Among the shirts are one with a decal featuring an enlarged $100 bill featuring a portrait of Osama bin Laden; others appear with the phrases “We are f**t” and “Fight crime; buy a gun.” Another features a photo of a 1599 painting by Milanese artist Caravaggio depicting the biblical character, Judith, severing the head of the invading Assyrian general Holofernes.
The agency found the trademark contains “immoral or scandalous” matter prohibited under the Trademark Act of 1946, also known as the Lanham Act.
The rejection was upheld by the Trademark Trial and Appeal Board but reversed by the U.S. Court of Appeals for the Federal Circuit, which ruled that preventing Brunetti from trademarking the acronym violated his First Amendment rights. The PTO appealed the decision to the Supreme Court, which, on Jan. 4, agreed to hear the case.
In a Dec. 15, 2017, decision, the circuit court found that the board was correct in determining that the trademark was immoral or scandalous but that the statute’s “bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech.”
During oral arguments, several justices suggested that the refusal to register the trademark, a legal protection that would give Brunetti more power to crack down on counterfeiters copying his designs, seemed arbitrary.
Deputy Solicitor General Malcolm L. Stewart described the phonetic equivalent of a form of the F-swear word as something that “would be perceived by a substantial segment of the public as the equivalent of the profane past participle form of a well-known word of profanity and perhaps the paradigmatic word of profanity in our language.”
Addressing Stewart, Justice Neil Gorsuch said he could list “several” trademarks that have been granted that “have phonetics along the lines you’ve described.” He asked where “the rational line” should be drawn.
“How is … a person who wants to get a mark supposed to tell what the PTO is going to do?” Gorsuch asked. “Is it a flip of the coin?”
Stewart said that “the PTO looks to context.”
“And so, if a phonetic word like the one I described appears in a sentence or in a phrase in which the profane word would commonly appear, the PTO is more likely to conclude that a substantial segment of the public will regard that as the equivalent of the profane mark because it is being used in the way that the profane mark is often used.”
If the relevant part of the Lanham Act were to be declared unconstitutional, Justice Samuel Alito asked, “what is going to happen with whatever list of really dirty words still exist and all of their variations? There’s going to be a mad scramble by people to register these marks.”
Stewart suggested that would not happen because “there are other barriers to trademark registration.”
Justice Elena Kagan said to Brunetti’s attorney, John R. Sommer, that “our standard for obscenity is so high, I can’t believe that many trademarks would really qualify as … obscene.”
Justice Sonia Sotomayor said, “Some of us would say that a vulgar word with relationship to selling clothes is sort of irrelevant.”
“Well, it’s not irrelevant because, as Justice [Ruth Bader] Ginsburg pointed out, the audience that Mr. Brunetti is appealing to is young men who want to be rebels. And this is how they do it,” Sommer replied.
Chief Justice John Roberts interjected, saying, “Well, that may be the audience he’s targeting, but that’s not the only audience he reaches.”
Sommer replied, “Agreed.”
Roberts continued, saying that “gets to the government interest in whether or not it wants to be … associated with facilitating this type of vulgarity. I guess you would say the whole point is to reach beyond the targeted audience to offend people.”