Disparaging, immoral or scandalous trademarks? Bring them on!

Are you considering registering a trademark that “Consists 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 recent Supreme Court case will help you achieve that goal. The Supreme Court of the United States ruled on June 19, 2018 that disparagement provision of Section 2(a) of the Trademark Act is facially unconstitutional because it violates the Free Speech clause of the First Amendment. Section 2(a) of the Lanham Act bars the U.S. Patent and Trademark Office (“USPTO”) from registering scandalous, immoral, or disparaging marks. 15 U.S.C. § 1052(a).  Simon Shiao Tam named his rock band THE SLANTS to make a statement about racial and cultural issues. He sought federal trademark registration for THE SLANTS, for “Entertainment in the nature of live performances by a musical band”. The name “The Slants” was the name of his Portland-based Asian-American band. He named his band The Slants to “reclaim” and “take ownership” of Asian stereotypes. His trademark application was rejected by the USPTO “finding it likely disparaging to “persons of Asian descent” under § 2(a), which in pertinent part bars the registration of marks that may “disparage … or bring into contemp[t] or disrepute” and “persons, living or dead.” The Trademark Examining Attorney found that the mark likely referred to people of Asian descent in a disparaging way, explaining that the term “slants” had “a long history of being used to deride and mock a physical feature” of people of Asian descent.”

Finding this restriction unconstitutional, the Supreme Court ruled that the disparagement clause of the Lanham Act violates the First Amendment’s free speech clause. The Court reasoned that “It is a bedrock principle underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys.” The Court rejected the government’s argument that “trademark registration is government speech, and as such outside the coverage of the First Amendment.” The Court concluded that “there is no government speech at issue in the rejection of disparaging trademark registrations that would insulate § 2(a) from First Amendment review.” The Court reasoned that merely because the government “…disapproves of the expressive messages conveyed by the marks. It cannot refuse to register marks because it concludes that such marks will be disparaging to others. The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of § 2(a) is unconstitutional”. To pass strict scrutiny, the law or policy must have been passed to further a “compelling governmental interest,” must be narrowly tailored to achieve that interest, and must be the least restrictive means for achieving that interest. According to the Court, the government’s argument also failed under the less stringent “intermediate scrutiny” which requires that the challenged law furthers an important government interest by means that are substantially related to that interest. According to the Court “Because the government has offered no legitimate interests justifying § 2(a), we conclude that it would also be unconstitutional under the intermediate scrutiny traditionally applied to regulation of the commercial aspects of speech.”

What impact will have this decision? This decision helped to settle a litigation of more than 25 years regarding the cancellation of the Washington NFL team’s federal trademark registrations for “WASHINGTON REDSKINS”. A legal challenge to the Washington NFL team’s federal trademark registrations made by Native American’s tribes who considered the term to be offensive and disparaging. On January 2018, based on the Tam’s decision, the U.S. Court of Appeals for the Fourth Circuit vacated decisions that had canceled the Washington NFL team’s federal trademark registrations. Also, it helped a U.S. Court of Appeals for the Federal Circuit, when it ruled that “Fuct, while vulgar, was protected speech under the First Amendment.” Erik Brunetti appealed a decision by the USPTO refusing to register his application for the trademark “fuct” for clothing. The Court of Appeals for the Federal Circuit struck down the second part of Section 2(a) of the Lanham Act that bars trademark hopefuls from registering material considered to be “immoral” or “scandalous.” The USPTO is still deciding over whether to ask the U.S. Supreme Court to reinstate the Lanham Act’s ban on “scandalous” trademarks. On May 24, 2018 the USPTO issued Examinations guidelines for applications that receive a “scandalous or immoral” refusal under Section 2(a), indicating that it will be (or will remain) suspended pending the final outcome of the “FUCT” case. The period for the USPTO to petition for a writ of certiorari in Brunetti expired on July 11, 2018. An application to extend the time to file a petition for a writ of certiorari from July 11, 2018 to August 10, 2018 was filed by the USPTO and granted on June 29, 2018. Then on September 7, 2018, the USPTO filed with the Supreme Court a Petition for a Writ of Certiorari in Iancu v. Brunetti, seeking the Court’s review of the judgment of the U.S. Court of Appeals for the Federal Circuit in In re Brunetti, 125 USPQ2d 1072. In view of the “The Slants” Decision and new justices in the Court we will have to wait and see how this one will be decided. Our firm is currently waiting for the outcome of the Brunetti decision. Our client Slangology Apparel, LLC.’s filed an application for the trademark “SWEET PWUSSY SATDAY” filed under the intent to use the mark in commerce for “Bandanas; Headgear, namely, caps and hats; Jerseys; Short-sleeved or long-sleeved t-shirts; Short-sleeved shirts; Tee shirts”. The application was initially denied “because the applied-for mark consists of or includes immoral or scandalous matter” under Trademark Act Section 2(a), 15 U.S.C. §1052(a). After presenting arguments against the refusal of our client’s trademark, the Examining attorney suspended any further action on our client’s application because the constitutionality of the scandalous provision of Section 2(a) is currently under review at the Federal Circuit.  In the mean time, let’s keep filing those disparaging, immoral or scandalous trademarks!