Two Significant Court Decisions Impacting USPTO Trademark Practice

Two recent decisions, one before the U.S. Supreme Court and one pending before the Federal Circuit have kept the United States Patent & Trademark Office (“USPTO”) busy writing Examination Guidance for Section 2(a) of the Lanham Act’s Disparagement Provision and Scandalous Provision. See Examination Guide 1-17. See also our webpage entitled, Trademarks That Falsely Suggest A Connection With Other Persons, where it is discussed that Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a) bars registration of trademarks that are immoral, deceptive, scandalous or if the mark falsely suggests a connection with other persons (living or dead), institutions, national symbols, or beliefs.

In Matal v. Tam, also known as “The Slants” case, the U.S. Supreme Court held that the provision of the Lanham Act Section 2(a) which has denied federal registration to trademarks that disparage or bring into contempt or disrepute any persons living or dead is unconstitutional under the Free Speech Clause of the First Amendment. This decision was issued on June 19, 2017. In this case, the applicant Simon Shiao Tam filed a trademark application with the USPTO for the name of his Asian-American rock band. The Slants are seeking to register the name for entertainment services in the nature of live musical performances. Mr. Tam was the lead singer of the band and he stated that he wanted to take back ownership of a word that created stereotypes in the Asian culture. See In re Simon Shiao Tam, 108 USPQ2d 1305 (TTAB 2013) [precedential].

The USPTO refused the application under Section 2(a) of the Lanham Act as being disparaging and offensive to a substantial composite of people of Asian descent. The U.S. Supreme Court unanimously held that the Disparagement Provision discriminates on the basis of viewpoint. Based on this decision, the Disparagement Provision of Section 2(a) is no longer a valid ground for refusal by the USPTO. The portions of the Trademark Manual of Examining Procedure §1203 that relate to examination under the Disparagement Provision no longer apply.

Trademark applications that received an advisory refusal based on the Disparagement Provision and those that were suspended, will be removed from suspension and re-examined for other requirements. The Disparagement Clause has been at the center of other trademark cases. The Washington Redskins Football’s mark was cancelled in 2014 on claims that it disparaged Native Americans. This decision will likely have a positive influence on the Washington Redskins’ case.

The other trademark case pending before the Federal Circuit also involves Section 2(a) of the Lanham Act. See In re Brunetti, however this case focuses on the Scandalous Provision. To prove that a term is scandalous before the Trademark Trial and Appeal Board, it must be shown that the term or phrase is vulgar. The term must be considered in the context of the identified goods and in view of contemporary attitudes. The applicant was an artist seeking to register the term “FUCT” for apparel. His work was often controversial, involving revolutionary themes and strong bold images.

The applicant argued that the term “FUCT” was selected as an arbitrary coined term. However, the Board did not buy this argument and stated the argument “stretched credulity”. The Board affirmed the refusal to register the mark FUCT for athletic apparel under the Trademark Act Section 2(a), 15 U.S.SeC. §1052(a) because the mark comprises immoral or scandalous material. The applicants appealed to the Federal Circuit Court challenging the constitutionality of the Scandalous Provision of Section 2(a) of the Lanham Act. The Federal Circuit has requested that the parties submit briefs explaining their respective positions now that the U.S. Supreme Court has issued a decision in Tam. The USPTO will continue the suspension of cases based on the Scandalous Provision, awaiting a decision from the Federal Circuit for In re Brunetti. In the interim, if you have questions involving a potentially scandalous trademark or any trademark related inquiry, please contact our office for a courtesy consultation.