Scandalous and immoral (trademarks)

Gavel to Gavel

published in The Journal Record | August 31, 2017

By Sasha Beling

Since 1946, federal law has prohibited registration of scandalous, immoral and disparaging trademarks. This summer, the U.S. Supreme Court found the prohibition on disparaging trademarks to be unconstitutional, creating potential protection for “immoral” and “scandalous” terms.

The Lanham Act is the federal law that concerns federal rights and registration of trademarks in the United States. Section 2(a) of the Lanham Act forbids registration of a trademark that “consists of … immoral…or scandalous matter; or matter which may disparage.” Disparagement became a key issue when Simon Tam filed a trademark application for the band name THE SLANTS in 2011. The U.S. Patent and Trademark Office denied registration on the basis that the mark was derogatory to those of Asian descent. Tam disagreed, arguing that the name was intended “to reclaim and take ownership of Asian stereotypes.”

The dispute ultimately found its way to the U.S. Supreme Court this summer, when, in Matal v. Tam, the court unanimously held that the disparagement provision of Section 2(a) violates the Free Speech Clause of the First Amendment because it “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

The ruling unsurprisingly comes with mixed reactions. For example, the Tam decision is good news for the Washington NFL football team, which has been in litigation for years over its team name, but bad news for Native Americans and government agencies seeking to prevent use of that name.

Critics do agree on one thing, however. The Lanham Act’s prohibition on “immoral” or “scandalous” trademarks is next on the chopping block. In fact, the issue was addressed at oral argument earlier this week in a pending Federal Circuit case, In Re Brunetti, a fight over the USPTO’s denial of a trademark application for FUCT.

If “scandalous” and “immoral” marks are given the same green light as “disparaging” marks, the USPTO may be faced with an increase in applications of previously unattainable marks, which may create backlog for those seeking registration of “reputable” marks. The general public may also see an increase in brand names using terms and phrases generally thought to be unseemly and unscrupulous. Stay tuned.

This article appeared in the August 31, 2017, issue of The Journal Record. It is reproduced with permission from the publisher. © The Journal Record Publishing Co.