Is the Ban on Registering Scandalous Trademarks Also Doomed?

October 12, 2017
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SCOTUS’s Decision in Matal v. Tam May Strike Down Federal Government’s Ban on Registering Scandalous Trademarks

The federal government’s ban on registering scandalous trademarks may also be struck down in light of the U.S. Supreme Court’s decision in Matal v. Tam. Late last month, the Federal Circuit Court of Appeals heard oral arguments in a case challenging the U.S. Patent and Trademark’s Office’s refusal to register fashion designer Erik Brunetti’s “FUCT” trademark. The appeals court suggested that the USPTO’s refusal to register marks containing profanity and graphic sexual images also likely runs afoul of the First Amendment.

Is Ban on Registering Scandalous Trademarks Also Doomed?

Photo courtesy of Kelly Sikkema (Unsplash.com)

Prohibited Marks under the Lanham Act

Under the Lanham Act, the U.S. Patent and Trademark Office (USPTO) may refuse to register a trademark that “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” A “disparaging mark” is defined as one that “dishonors by comparison with what is inferior, slights, deprecates, degrades, or affects or injures by unjust comparison.” Meanwhile, a scandalous or immoral trademark is one that offends the sensibilities of the public at large.

As discussed in a prior post, the U.S. Supreme Court recently struck down the federal ban on registering disparaging trademarks. The USPTO denied Simon Shiao Tam’s application to register the mark “The Slants” in connection with his Asian-American dance band of the same name, concluding the mark was disparaging to people of Asian descent. Tam challenged the denial, arguing that the Lanham Act’s prohibition of disparaging marks was unconstitutional under the First Amendment. The Federal Circuit struck down the disparagement provision as unconstitutional, and the Supreme Court affirmed. “We now hold that this provision violates the Free Speech Clause of the First Amendment,” Justice Samuel Alito wrote. “It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

Arguments Raised in In re Brunetti

The Supreme Court’s decision only addressed the disparaging trademarks ban. However, Brunetti has raised similar First Amendments claims in his lawsuit.

In 2011, Brunetti filed a trademark application for the term FUCT for use on athletic apparel. The Trademark Examining Attorney refused registration of the mark under Section 2(a) of the Lanham Act, citing that it comprises immoral or scandalous matter. According to the Trademark Examining Attorney, the term “Fuct” is the phonetic equivalent of the word “Fucked,” and, therefore is “vulgar, profane and scandalous slang.”

The Trademark Trial and Appeal Board affirmed the denial, agreeing that “a substantial composite of the general public would find this designation vulgar.” It also concluded that “the Trademark Trial and Appeal Board is not the appropriate forum for re-evaluating the impacts of any evolving First Amendment jurisprudence within Article III courts upon determinations under Section 2(a) of the Lanham Act.”

On appeal, the Federal Circuit asked the parties to submit briefs explaining how the constitutionality of the scandalousness provision should be resolved in light of the Supreme Court’s decision in Tam. “[T]here is no difference between the disparagement clause and the scandalous clause,” Brunetti’s attorney argued in a brief to the Federal Circuit. “Disparaging marks are refused because they are offensive. Scandalous marks are refused because they are offensive. The disparagement clause is unconstitutional. It follows that the scandalous clause is unconstitutional.” Meanwhile, the USPTO argued that the ban on scandalous marks is distinct because it is not based on the speaker’s viewpoint.

Implications of Trademark Decisions

In the wake of the Supreme Court’s decision in Matal v. Tam, the USPTO issued Examination Guide 01-17, entitled “Examination Guidance for Section 2(a)’s Disparagement Provision after Matal v. Tam and Examination for Compliance with Section 2(a)’s Scandalousness Provision While Constitutionality Remains in Question.”  The guidance advised that “[t]he portions of [the] Trademark Manual of Examining Procedure (TMEP) §1203 that relate specifically to examination under the disparagement provision no longer apply.” It also stated that applications that were suspended under the disparagement provision may now proceed to publication.

With regard to the scandalousness provision, the USPTO acknowledged that its constitutionality is still up in the air. Accordingly, the guidance states:

The USPTO continues to examine applications for compliance with that provision according to the existing guidance in the TMEP and Examination Guide 01-16.  Any suspension of an application based on the scandalousness provision of Section 2(a) will remain in place until the Federal Circuit issues a decision in Brunetti, after which the USPTO will re-evaluate the need for further suspension.   

We will be closely monitoring the Federal Circuit’s decision in In re Brunetti, as well as the USPTO’s response. Please check back for updates.

If you have any questions or if you would like to discuss your copyright, trademark, or patent legal needs, feel free to contact me, William Samuels, at 201-806-3364.