Intellectual Property Law Knowledge Center

Are You Offended?: Scandalous and Disparaging Trademarks

January 17th, 2019

By Bridget H. Labutta

As we have covered in previous blog posts, not every name or brand is eligible for federal trademark registration with the U.S. Patent & Trademark Office (USPTO). One of the reasons the USPTO might reject an application to register a trademark is because the trademark “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage….”. A finding that a trademark is scandalous or disparaging – i.e., offensive – is subjective. A Trademark Examining Attorney with the USPTO has to present clear evidence to support such a rejection, which may include internet discussions, articles, and dictionary definitions.

 

Examples of trademarks that have been refused registration by the USPTO for being offensive include the following logos and words:

The refusal to register does not eliminate an entity’s trademark rights, as registration is not necessary to claim or enforce trademark rights. A federal trademark registration confers significant benefits that are certainly worth the effort of application, but even unregistered trademarks may be protected under the common law, state statutes, and/or federal law.

The refusal to register does not always stand. The Trademark Examining Attorney’s decision can be appealed to the USPTO’s Trademark Trial and Appeal Board (TTAB), and the TTAB’s decision can be reviewed by a district court or the Court of Appeals for the Federal Circuit. From there, the U.S. Supreme Court may even step in.

In the case of THE SLANTS, the owner/applicant Simon Shiao Tam ultimately secured his federal trademark registration. (Note that all other trademarks shown above remain unregistered…so far.) The Trademark Examining Attorney initially refused registration on the grounds the trademark “consists of or includes matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols” based on evidence demonstrating “the likely meaning of ‘THE SLANTS’ to be a negative term regarding the shape of the eyes of certain persons of Asian descent.” Mr. Tam appealed to the TTAB, which affirmed the refusal. From there, Mr. Tam appealed to the Federal Circuit, which vacated and remanded the TTAB’s decision and made a sweeping change to U.S. trademark law by holding that 15 U.S.C. § 1052(a) is unconstitutional with respect to “disparaging” marks, specifically.

After Mr. Tam’s victory before the Federal Circuit, the USPTO filed a petition for writ of certiorari with the U.S. Supreme Court. The court granted the petition and later affirmed the Federal Circuit’s knock-out to the ban on registration of “disparaging marks.” All eight justices who participated in the case agreed that Section 1052(a)’s prohibition on the federal registration of “disparaging” marks was facially invalid under the First Amendment, but a majority did not agree on the rationale for this decision. Shortly thereafter, the USPTO issued the registration for THE SLANTS.

Around the same time Mr. Tam filed his application to register THE SLANTS, someone else was filing an application to register FUCT. Interestingly, the Trademark Examining Attorney initially approved the application for publication, but a subsequent review of the application resulted in a refusal to register on the grounds “the term FUCT is a novel spelling of a disparaging restricted vulgar term” that is “immoral or scandalous” under 15 U.S.C. § 1052(a). The applicant, now identified as Erik Brunetti, appealed to the TTAB, which affirmed the refusal. From there, Mr. Brunetti appealed to the Federal Circuit, which reversed the TTAB and held that 15 U.S.C. § 1052(a) is unconstitutional with respect to “immoral or scandalous” marks, as well. Again, the USPTO filed a petition for writ of certiorari with the U.S. Supreme Court.

This spring, the U.S. Supreme Court is anticipated to decide whether Section 1052(a)’s prohibition on the federal registration of “immoral or scandalous” marks is facially invalid under the First Amendment. The USPTO has initially argued that the court’s decision in THE SLANTS case is not controlling here and that there remain key questions left open after THE SLANTS decision.

For now, the USPTO will likely continue to refuse to register marks it deems to be “immoral or scandalous” but we shall see if the U.S. Supreme Court allows Section 1052(a)’s century-old provisions to stand or fall.

The trademark attorneys at Panitch Schwarze are available to answer questions you may have about enforcing your disparaging trademark rights. Contact us today for more information.

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