• Offend Away! Offensive, Scandalous, and Immoral Trademarks Now Registrable
  • December 17, 2017
  • Earlier this year, on June 19, 2017, the U.S. Supreme Court struck down the Lanham Act’s prohibition on the registration of “offensive” trademarks in Matal v. Tam. In that case, Simon Tam, the lead singer of the Asian-American group “The Slants” filed an application with the United States Patent and Trademark Office (“PTO”) to register the mark “The Slants” for goods and services related to live musical entertainment.

    The PTO rejected Tam’s application, reasoning that the term “slants” is sometimes used as a derogatory term for people of Asian descent, and Section 1052 of the Lanham Act mandates refusal of an application that is disparaging. The Supreme Court reversed that refusal, holding that the disparagement clause of the Lanham Act facially violated the First Amendment’s protection of free speech.

    On December 15, 2017, the U.S. Court of Appeals for the Federal Circuit took this line of reasoning a step further, and found that the Lanham Act’s probation on “immoral” or “scandalous” trademark registrations was also unconstitutional. The case, in re Erik Brunetti, arose from a Los Angeles artist’s attempt to register his clothing brand “FUCT” as a trademark with the PTO. The PTO refused to register the mark under Section 2(a) of the Lanham Trademark Act, which prohibits registration of marks that include “immoral” or “scandalous” matter. The Federal Circuit reasoned that Tam’s precedent was of equal weight relative to “immoral” and “scandalous” marks, and invalidated these prohibitions.

    These decisions do not necessarily mean that the marketplace will suddenly be flooded with profane, offensive, and scandalous brands. However, these decisions will mean that cutting-edge brands will have an easier path to federal registration, and PTO examiners will have fewer boxes to check when examining trademark applications. Clark Partington’s IP routinely counsels companies on brand protection, including federal registration of their trademark portfolios.