By Pedro Drummond and Giulia Porto*
One of the recommendations we give our clients at the beginning of the trademark registration process in the United States is to choose a name that avoids any controversy — that is, don’t use swearwords, even if that “swearing” is only in the sound aspect . However, it now seems from now on we can retire this advice.
That’s because the US Supreme Court has recently opened precedents for trademarks containing words, symbols or meanings considered vulgar, indecent or immoral to be registered in the country. What caused this turnaround was the lawsuit filed by businessman Erik Brunetti, when the registration of his trademark, FUCT, was rejected by the United States Patent and Trademark Office (USPTO).
Although the word “fuct” does not exist in the English language vocabulary, it sounds like a expletive. This was the reason given by the USPTO to reject the registration of Brunetti’s trademark, which is justified by the office’s own rules. However, in defense of his trademark, Brunetti alleged that the position of the USPTO broke the constitutional guarantee of freedom of speech. The process began in 2011 and the decision in favor of the entrepreneur was only reached in June this year.
The result of the trial opens a huge precedent for the acceptance of words and images that are considered “immoral” and “scandalous” — it is worth remembering that, in the United States, the legal system follow the Common Law, which is based on unpublished law, jurisprudential law and customs. Brazil, on its turn, follows the Civil Law, based on the positive and codified law.
The Supreme Court’s decision in favor of a trademark whose name makes reference to a expletive may cause surprise. However, it must be pointed out that this judgment is a positive message regarding freedom of expression and free speech, reminding the USPTO of the guarantee brought by the first American constitutional amendment. This leads, therefore, to a new era for the US trademark registration scenario and makes it possible for brands hitherto seen as prohibited to glimpse a chance for their registration.
PEDRO DRUMMOND is a licensed lawyer for practicing law in Brazil and the United States. He has more than 10 years of experience in legal advice for Brazilian and American multinational companies. He is a partner of Drummond Advisors, an office specializing in international transactions.
GIULIA PORTO holds a bachelor’s degree in law from PUC Minas and a degree in Business Administration from Sebrae. She has specialized in trademark registration in the US, working for more than 3 years at Drummond Advisors. She also works in the drafting and review of international contracts, opening of companies in the USA and obtaining American work visas.