TrademarksU.S. Supreme CourtUSPTO

Barring Registration of Scandalous & Immoral Trademarks is Unconstitutional

Section 2(a) of the Lanham Act

The Federal Circuit confirmed the inevitable ten days before Christmas by ruling that banning registration of scandalous and immoral trademarks violates the First Amendment. The U.S. Supreme Court ruled in June that refusing to register disparaging trademarks violated the First Amendment.

Both scandalous and immoral trademarks, along with disparaging marks, had been intertwined in Section 2(a) of the Lanham Act. Section 2(a) provides that trademarks falling into those categories should not be registered as federal trademarks. Thus, those trademarks could retain common-law trademark protection but were denied added protections that accompany a federal registration.

Section 2(a) had obvious flaws that left itself open to criticism leading to the recent court holdings. The standard for what was scandalous, immoral, or disparaging was subjective and difficult to measure. There are examples of trademarks that were allowed registration that appeared to be impossible to separate from others that had been denied registration on the basis of being scandalous or disparaging. The examiner’s subjective views determined whether a trademark was registered or not on the basis of its speech instead of a trademark’s intended purpose of avoiding consumer confusion.

Matal v. Tam & The Washington Redskins

Matal v. Tam involved a band named “The Slants,” comprising members of Asian ethnicity. The name was meant to be a tongue in cheek reference to the band members’ ethnicity. However, federal registration for the mark was denied on the basis of it being a disparaging term. Eventually the case reached the Supreme Court, which in June held that the disparagement clause in the Lanham Act violates the First Amendment.

Another high-profile case involving the Washington Redskins was in litigation at the time of the Supreme Court’s decision. The holding in Matal v. Tam concluded that litigation and ensured that the term “Washington Redskins” could regain its federal trademark status. The USPTO subsequently issued instructions that disparaging marks would not be refused on that basis. Trademarks previously suspended for that reason would be removed from suspension and reexamined.

In re Brunetti

The Federal Circuit held on December 15th that In re Brunetti was the natural extension of the Supreme Court’s holding in Matal v. Tam. Section 2(a)’s scandalous, immoral, and disparaging trademarks are now in sync and cannot be refused federal registration on those basis’s.

In re Brunetti involved a company that sought to gain federal trademark registration for the mark “FUCT,” for apparel. The mark’s supposed immoral or scandalous nature was the basis for the rejection of the registration. The Court found that the scandalous marks provision of Section 2(a) violated the First Amendment and failed both strict scrutiny and intermediate scrutiny standards of review.

Conclusion

Marks such as “The Slants” or “FUCT” were free to be used as trademarks prior to these court decisions. The USPTO, as a government entity, in applying the Lanham Act simply refused to grant them federal registration. The Slants, Washington Redskins, and others must decide if their marks are worth protecting or if they will face unwanted public backlash. The public, and not the government, will help make that choice for them moving forward.