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The United States Patent and Trademark Office (USPTO) traditionally has rejected any trademark that contains “immoral, deceptive, or scandalous matter” or content that may “disparage” people, institutions, or beliefs. Times have changed, however, and thanks to Supreme Court rulings in recent years, trademarks can no longer be rejected due to possibly offensive or objectionable material.

Panitch Schwarze attorney Bridget H. Labutta authored an article in The Legal Intelligencer providing an overview of these recent changes. She highlights two cases that resulted in trademark examiners no longer using Section 2(a) of the Lanham Act to refuse to register content they find offensive.

 In 2011, Simon Shiao Tam filed an application to register the name of his band, The Slants. When the application was refused on the grounds that the band name is disparaging to people of Asian descent, Tam appealed to the Federal Circuit, which found that it was unconstitutional to refuse a trademark due to its “disparaging” nature. Around the same time, the Supreme Court held that prohibiting federal registration of “immoral or scandalous” marks violates the First Amendment after Erik Brunetti’s application to register FUCT as a trademark with the USPTO was refused.

Labutta notes that both cases show how the appeal process can result in lasting changes to trademark law. When applications are refused, many applicants appeal to the USPTO’s Trademark Trial and Appeal Board. Later, the decision may be reviewed by a district court or the U.S. Court of Appeals for the Federal Circuit, with the U.S. Supreme Court sometimes stepping in for final judgment.

Read the full article here: Changing Times: Finding a Trademark Offensive Now Off the Table (Subscription is required.)

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