Making Offensive Trademarks Legal, If Not Fashionable (Incau v. Brunetti)

Some of the most challenging cases in law (and in political philosophy) are questions about the limits of freedom. It is generally accepted by all but the most extreme anarchists that some level or order and constraint on behavior must be maintained in a society. Opinions differ greatly as to methods, reasons, and applications more specific than this.

For Americans, finding the limits on the freedom of speech found in the first amendment is a perennial challenge.

 

I) The Case

Brunetti makes a clothing line called “Fuct.” Like many people who make something, he wanted to register a trademark for his brand. However, the 1946 law that governs trademarks in the US (the Lanham Act) prohibits “immoral… or scandalous” trademarks. The US Patent and Trademark Office rejected Brunetti’s application for a trademark because they found that the mark “Fuct” is “scandalous or immoral.” Brutnetti brought the USPTO to court (the court case is named for the director of the USPTO, Andrei Incau). The Supreme Court found that Brunetti cannot be denied his trademark registration on the grounds given by the USPTO, and declared that the section of the Lanham Act that prohibits immoral or scandalous trademarks is unconstitutional as a violation of the first amendment.

This case follows a previous ruling on disparaging trademarks. In 2017, the Supreme Court decided that an Asian-American music group called “The Slants” could not be denied their trademark on the grounds of the offensive nature of the name. This ruling found that another part of the Lanham Act was unconstitutional: the prohibition of trademarks which are disparaging.

Unsurprisingly, it has been difficult to apply a law that relies on such an amorphous and malleable concept as “offensive.” Since the Lanham Act was passed over 60 years ago, the USPTO has accepted and rejected trademarks that could be considered immoral or scandalous.

 

II) Potential Problems and A Public Safety Possibility

With disparaging and offensive trademarks no longer prohibited by the Lanham Act, what constraints remain?

One of the few things that consistently beats out freedom of speech in American law is public safety. The iconic example from a case in 1919 is that the act of shouting “fire!” in a crowded theater (where there is no actual fire) and causing a panic in which people could be injured or die is not an act protected by the first amendment.

One of the foreseeable problems with opening up trademarks to offensive and scandalous terms is the potential for trademarks which seek to harm people (for example, promote violence). There are already restrictions on trademarks that prevent some confusion with official government symbols. I think there is a line of reasoning that such existing restrictions serve the purpose of promoting public safety, and therefore rejecting trademarks that threaten public safety may be permitted.

Trademarks which are grossly offensive but do not threaten public safety may be more difficult to oppose or cancel. The 2017 Matal v Tam case ended the litigation around the cancellation of the trademark for the Washington, D.C. football team. Such is the difficult and challenging nature of creating and applying law: it is always a balancing act of various competing interests, and it is very difficult to create winners without creating losers.

 

III) You Can’t Be Refused Your Trademark, But I Can Refuse To Say It

I think there’s an Easter egg in this case: a hidden, subtle lesson that I’m not sure I fully grasp. As far as I can tell, for the entire proceeding of this case, none of the justices actually used the word that “Fuct” imitates. They did not say it during oral arguments and it does not appear anywhere in 44 pages comprising five different opinions.

That word, and the use of it, is fundamental to this case. The Court handed down an opinion that required the government to not prohibit the use of a word that the Court thoroughly (almost pointedly) declined to use. This suggests interesting things about language, culture, and law. Maybe this lack of usage underscores a point about the chasm between what is legal and what choices people can make. Maybe it illustrates a kind of objection-by-performance, demonstrating that people can act and speak in ways that differ from mere legal requirement.

Although this case changes the law to permit offensive language in trademarks, the cultural sensibilities and sentiments that once prohibited such speech remain. Tension between culture and law is rarely sustainable.

 

 

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Elderwood Academy’s Dicey Trademark Application

Elderwood Academy (technically, Three Frog LLC) has filed an application for a trademark on one of its products. It’s an interesting trademark because it is for the design and shape of the product, rather than a word, mark, or image associated with a good or service. It is the kind of trademark that IP attorneys describe as “trade dress,” which has a special niche place in the world of intellectual property.

A fundamental role of trademarks is to prevent consumer confusion. I actually have two of these products. The first time I saw this product, I believed the manufacturer was Wyrmwood. I was confused about this for over a year—until I tried to buy one from  Wyrmwood’s booth at PAXUnplugged. This is the kind of anecdote that suggests a need for trademark protection.

How Competitors Can Respond to a Trademark Application

When a trademark is filed, it is reviewed by a Trademark Examiner. If there are no problems, the examiner publishes it for opposition from the public. If there are no filings in opposition, the trademark is granted. Wyrmwood is one company that might have an interest in this trademark application; if Wyrmwood wants to eventually make hexagonal dice vaults, this trademark would present a problem for them. Wyrmwood will likely have an internal meeting to decide how to respond to this, and select one of three actions: 1) do nothing and forfeit entry into the hexagonal dice container market, 2) file an opposition with the USPTO explaining why the trademark should not be granted to Elderwood Academy, 3) contact Elderwood Academy and negotiate a co-existence agreement.

The “do nothing” option always has the appeal of being the easiest. However, it is much more difficult to undo that choice later. Even if Wyrmwood has never before thought about making hexagonal dice vaults, and even if they currently have no plans or designs for future production of them, it is good business to imagine the possibility of one day getting in to that market.

The option to file a notice of opposition with the USPTO has some challenges. First, the application is pretty strong. I think there are some weaknesses that could reasonably be highlighted in an opposition filing, but I doubt the trademark would be denied on the basis of the problems I can see. Regardless of the result of the opposition filing, the act of fling it may create tension between Wyrmwood and Elderwood. Preserving positive business relations is important, even between competitors. (In my view, especially between competitors!)

The third option is to work together and negotiate a co-existence agreement. These kinds of agreements are contracts made by parties that have competing or potentially competing interests when a trademark is filed. Sometimes the agreement includes an acknowledgment that a trademark does not infringe or create a likelihood of confusion. Sometimes the agreement will effectively relinquish the use of a trademark in a certain area, or will include a promise to not attempt to enter a certain market or create a certain kind of product.

In this case, Wyrmwood might offer to promise to never make hexagonal dice vaults in exchange for Elderwood’s promise to never make dice towers or deck boxes. There are many promises and exchanges that the two companies might offer in order to avoid any opposition or conflict over the trademark. The two companies (or their attorneys) might create the agreement collaboratively, or they might enlist the services of a mediator to help them explore value-creating opportunities.

Cooperating Competitors

The products made by both Wyrmwood and Elderwood are used by tabletop game players- especially D&D players. The game D&D works best when everyone at the table cooperates, even when characters have conflicting goals/drives/motives. The Dungeon Master likes it when players and characters can work through their differences to cooperate. Otherwise, the DM has to make a ruling and that usually makes at least one player unhappy. In the same way, the Trademark Trial and Appeals Board (the authority that adjudicates trademark disputes) likes it when competitors can reach their own agreements and get along without needed a ruling.

Will Wyrmwood file an opposition? It depends a little on their business philosophy, their future plans, and their relationship with Elderwood. It’s certainly best if they work together.