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Matal v. Tam: What’s New and What to Watch in Registration of Disparaging, Immoral, and Scandalous Trademarks –

Writer’s Notice: As a result of of the character of the Matal v. Tam ruling and associated instances, this story incorporates language that some readers might discover offensive. Many of the trademark examples herein have been edited out of sensitivity for the readers, though they seem in their uncensored type in their respective purposes and registration certificates from the U.S. Patent and Trademark Workplace. multiple yr in the past, the U.S. Supreme Courtroom struck down the Lanham Act’s disparagement clause as unconstitutional in Matal v. Tam, 137 S. Ct. 1744 (June 19, 2017).  The case concerned Asian-American dance-rock band The Slants, who sought “to ‘reclaim’ and ‘take ownership’ of stereotypes about people of Asian ethnicity.”  The U.S. Patent and Trademark Workplace rejected the band’s software to register its identify beneath Part 2(a) of the Lanham Act, discovering that the mark “[c]onsists of . . . matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt.”  After the case made its means via the courtroom system, the Supreme Courtroom unanimously struck down the disparagement clause as viewpoint discrimination in violation of the First Modification’s free speech clause.  This submit explores Tam’s impression over the previous yr and associated developments on the horizon.

1. Disparaging Marks Since Tam

The fast impression of Tam was predicted properly earlier than the Supreme Courtroom entered its determination, as a number of teams have been vocal in their help for Tam’s place.  Each the Washington Redskins soccer group and the D*kes on Bikes Ladies’s Motorbike Contingent have since prevailed in their federal trademark registration disputes.

As well as, some marks that have been beforehand seen as disparaging have been issued registration certificates since Tam.  For instance, the mark CH*NKY MINKY FRIENDS FOREVER was given an advisory refusal beneath the disparagement clause with motion suspended pending the decision of Tam.  Examination resumed after the Supreme Courtroom determined Tam, and the applicant acquired a registration certificates a couple of weeks in the past.

Nevertheless, Tam has not resulted in a considerable surge in disparaging registrations.  That is unsurprising, provided that many corporations have robust market-based mostly causes not to use a disparaging mark.  Certainly, in January 2018, the Cleveland Indians baseball staff introduced that it will take away the Chief Wahoo emblem from its uniforms by the beginning of the 2019 season.  And Warner Brothers stopped licensing fashions of the “General Lee” automotive from The Dukes of Hazzard tv collection again in 2015 as a result of of the controversy created by the Accomplice Flag on the automotive’s roof.

Though there are definitely some deplorable exceptions, the bulk of current purposes for arguably disparaging marks seem to be in the identical vein as The Slants – makes an attempt by members of the disparaged group to reclaim the time period.  Maybe the most effective homage to Tam’s win on the U.S. Supreme Courtroom is the journal Slant’d, which “is an independent media company that celebrates Asian American identity through personal storytelling.”  After a profitable Kickstarter marketing campaign, Slant’d printed its first difficulty in July 2017.  It then filed a trademark software for SLANT’D on October 13, 2017 and acquired its registration certificates on July 10, 2018.


2. Immoral and Scandalous Marks 

Whereas disparaging marks have a sure area of interest in commerce (notably in the reclamation context), marks with shock worth can deliver super consideration to a model.  For instance, the restaurant chain Soiled Dick’s Crab Home has constructed its model round innuendo, utilizing the tagline “I got my crabs from Dirty Dick’s Crab House.”  And the clothes model French Connection UK has used shock worth in its promoting for many years, enjoying up the initials FCUK on its clothes and in its advertising campaigns.  Soiled Dick’s and FCUK are each registered with the USPTO, however the clothes model FUCT confronted rejection.

Eric Brunetti based FUCT in 1990, and the model’s clothes is distributed by shops like City Outfitters.  In 2011, Brunetti sought to register the FUCT mark with the USPTO.  The trademark analyzing lawyer rejected the appliance, reasoning that FUCT is the previous tense of the verb “f*ck,” which is a vulgar time period.  The examiner relied upon the portion of Lanham Act Part 2(a) that allows refusal if the mark “[c]onsists of or comprises immoral . . . or scandalous matter.”  Whereas preventing by means of the attraction course of, Brunetti filed an amicus temporary with the U.S. Supreme Courtroom in the Tam case.

Brunetti’s case ultimately made its method to the U.S. Courtroom of Appeals for the Federal Circuit, the place it was set for oral argument on August 29, 2017—about two months after Tam was determined.  The Federal Circuit panel issued is opinion on December 15, 2017, relying in giant half on Tam to strike down the Lanham Act’s ban on registration of immoral or scandalous marks as violating the First Modification.  In re Brunetti, 877 F.3d 1330 (Fed. Cir. Dec. 15, 2017).  Importantly, nevertheless, whereas the Tam determination was based mostly on improper viewpoint discrimination, the Brunetti majority wrote, “[i]ndependent of whether the immoral or scandalous provision is viewpoint discriminatory, we conclude the provision impermissibly discriminates based on the content in violation of the First Amendment.”

The Federal Circuit denied panel rehearing and rehearing en banc in Brunetti, so the subsequent cease is the U.S. Supreme Courtroom.  The unique deadline to file a petition for writ of certiorari was July 11, 2018, however authorities has requested and acquired two extensions.  If the federal government decides to search Supreme Courtroom evaluation, its deadline to request certiorari is now September 7, 2018.

Whereas Brunetti stays pending, the USPTO has continued to obtain purposes to register arguably immoral or scandalous marks.  On Might 24, 2018, the company issued steerage to its examiners that “the USPTO will continue to examine applications for compliance with the scandalousness provision while the constitutionality of the provision remains subject to potential U.S. Supreme Court review.”  Because it did with probably disparaging marks whereas Tam was pending, the USPTO has instructed examiners to conclude examination on all different points, and then droop examination on probably immoral or scandalous marks pending potential U.S. Supreme Courtroom evaluation.

Predictably, purposes to register a number of different variations of the phrase “f*ck” have been suspended, corresponding to AMERICAN AS F*CK, TEAM F*CK YOU, and JUST F*CK IT.  A couple of current purposes to register variations of the phrase “c*nt” are in the early levels of examination, together with two associated to campaigns to forestall texting and driving (C*NT: CAN U NOT TEXT and IF YOU TEXT AND DRIVE YOU’RE A C*NT). Assuming these marks are in any other case registrable, they may probably face suspension pending the result of Brunetti as properly, provided that the USPTO has beforehand used the immoral or scandalous clause to reject different purposes containing the identical vulgar time period.

three. Excellent Constitutional Scrutiny and Statutory Interpretation Questions

Many different associated points stay ripe for consideration in Brunetti and future instances. Most importantly, are logos thought-about “commercial speech?”  In that case, legal guidelines relating to logos could be topic to relaxed scrutiny for constitutional compliance quite than strict scrutiny.  In Tam, Justice Alito’s majority opinion discovered it pointless to tackle whether or not logos are “commercial speech,” concluding that the disparagement clause would represent unconstitutional viewpoint discrimination even underneath a decrease commonplace of assessment.  Nevertheless, Justices Kennedy, Ginsburg, Sotomayor, Kagan, and Thomas (a majority of the Courtroom on this difficulty) concluded that viewpoint discrimination is topic to strict scrutiny even in the context of business speech.  With Justice Kennedy’s current retirement and the Federal Circuit deciding Brunetti not on viewpoint grounds, however moderately as an impermissible content material-based mostly restriction, it’s troublesome to predict how the Supreme Courtroom may determine the “commercial speech” query in Brunetti or future instances.

Equally, Decide Dyk wrote individually in Brunetti to emphasize his view that the immoral or scandalous language in Part 2(a) ought to be narrowly construed to apply solely to “obscene” marks, and that development would protect its constitutionality.  Nevertheless, as a result of he discovered that the FUCT mark was not obscene, he concurred in the judgment.  Both by way of the Brunetti case or one other case in the longer term, the Supreme Courtroom may present steerage on the suitable statutory development for the immoral or obscene clause.

Whereas Tam settled some points associated to The Slants, the Washington Redskins, and D*kes on Bikes, the choice’s full influence stays to be seen.  Brunetti appears to be a promising avenue for the Supreme Courtroom to handle some of the tangential points left open by the Tam determination.


Pictures Supply: Deposit Photographs. 

Brian Iverson

Brian Iverson

is a Member in the Washington, D.C. workplace of Bass Berry + Sims, the place he focuses his apply on trademark litigation and different complicated business dispute decision. Mr. Iverson has represented shoppers earlier than the Trademark Trial and Attraction Board, the U.S. Courtroom of Appeals for the Federal Circuit, and many different federal and state courts throughout the nation. He additionally recurrently advises shoppers on trademark choice, model safety, domains, and different strategic trademark points. Mr. Iverson is an Affiliate Fellow of the Litigation Counsel of America and was chosen as a “Rising Star” in the 2014-2018 editions of Washington, D.C. Tremendous Legal professionals. He earned his B.B.A. from Belmont College, cum laude, and his J.D. from Pepperdine College Faculty of Regulation, magna cum laude and Order of the Coif.

For extra info or to contact Brian, please go to his Agency Profile Web page.