July, 14th, 2017

By Chelsea A. Russell

On June 19, 2017, the Supreme Court expanded trademark protection in its much-awaited ruling of Matel v. Tam, 582 US ___ (2017). The Lanham Act has long held that a trademark cannot receive federal registration if it disparages “persons, living or dead, institutions, beliefs, or national symbols, or brings them into contempt, or disrepute.” 15 USC § 1052(a). This clause has recently been used to challenge federal registration for sports franchises that identify with brand markers often considered offensive, such as the Washington Redskins.

In Tam, the applicant sought registration for “The Slants” as a band name. The applicant was of Asian-American descent and sought to reclaim what has become a derogatory term used to refer to people of Asian descent by using it for his own purposes. Nevertheless, the USPTO rejected the application as disparaging towards people of Asian descent. The applicant then appealed to the Supreme Court, which held that the disparagement clause was fundamentally unconstitutional because the USPTO is engaging in viewpoint discrimination in violation of the First Amendment.

As a result of this ruling, the USPTO has issued an advisory notice acknowledging the rights of applicants to register marks that would previously be considered disparaging. Furthermore, applicants who previously received disparagement rejections may file a new application for the mark, even if the deadline for filing a petition to revive has expired.

The Tam ruling may also affect other registration restrictions built into the Lanham Act that are similar to the disparagement rejection, such as the statutory bar against scandalous marks. Similar to the disparagement clause, the scandalousness clause forbids the registration of marks which “consists of or comprises immoral, deceptive, or scandalous matter.” 15 USC § 1052(a). While Tam does not address this portion of the statute, its ruling will likely fuel the argument that the scandalousness clause is unconstitutional on the same grounds.

The Federal Circuit in In re Brunetti, No. 2015-1109 (CAFC), has already directed parties to prepare arguments explaining the relevance of the Tam decision on current proceedings relating to a scandalousness refusal. In Brunetti, the mark FUCT was refused on the basis that it was the phonetic equivalent of the expletive used in the past tense form, thereby acting as a vulgar and profane mark. While oral arguments were held months ago, it appears that the Federal Circuit was withholding judgment until the Supreme Court had decided Tam. Now that Tam has eliminated the disparagement refusal, it is likely the Federal Circuit will do the same with the scandalousness clause—both may incite offense or disgust and both arguably impede free speech.

As the Court cited in Tam, “if there is a bedrock principle underlying the First Amendment, it is that the government may not prohibit the expression of an idea simply because society finds the idea itself offensive or disagreeable.” See Texas v. Johnson, 491 US 397, 414 (1989). Until Brunetti is decided, the fate of the scandalousness clause remains up in the air, with the USPTO suspending all scandalousness rejection appeals until the Federal Circuit rules. Regardless, the Tam decision will significantly expand trademark protections to a group of marks previously denied registration.

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