If Your Brand is Edgy, Provocative, or Rated-R – File a Federal Trademark Application Now !!

Jul 19, 2018

Will The Supreme Court Hold That The USPTO Cannot Reject Marks That Are “Immoral or Scandalous”?

Despite recent Supreme Court precedent relating to Section 2(a) of the Lanham Act, the constitutionality of the “immoral or scandalous material” clause remains undecided. The United States Patent and Trademark Office (USPTO) can no longer reject marks which “disparage…persons, living or dead,” but according to the USPTO’s most recent Examination Guide, examining attorney’s may still reject marks which contain “immoral or scandalous material.” For applicants who have received such a rejection in a federal trademark application, or business owners who have yet to file a trademark application in anticipation of such a rejection, relief may soon be in sight.

Free Speech and the Lanham Act – Is Disparaging Material not Immoral or Scandalous?

Section 2(a) of the Lanham Act, the primary law regarding federal trademark registration, states that “[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it— (a) 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…” [Emphasis Added].

In other words, Section2(a) allows the USPTO to deny federal trademark application for marks which contain, among other things, immoral or scandalous material or which disparage people, such as racial slurs. The latter restriction, however, is no longer valid.

In 2016, the Supreme Court released its opinion in the case of Matal v.Tam, holding that denying a request for trademark based on the viewpoint that the trademark was “disparaging” was unconstitutional. In Tam, an Asian-American rock band appealed the denial of its application for a federal trademark for the name “The Slants,” which had been denied by the USPTO as disparaging of Asian-Americans. The applicants argued, and the Supreme Court agreed, that denial of a trademark application based on its presumed “disparaging” content was an unconstitutional viewpoint restriction in violation of the First Amendment.

The holding in Tam, while a definitive rejection of the “disparagement clause” of Section 2(a), does not address the remainder of the paragraph, nor does it reject Section 2 as a whole.

Arguably, the immoral or scandalous matter clause may be unconstitutional under similar reasoning. After all, disparaging matter seems to be a sub-set of immoral or scandalous material, and both clauses require the rejection of marks based on their content. Such an argument was at the heart of the In re Brunetti appeal to the Federal Circuit in 2017. In that case, the Federal Circuit ruled in favor of the appellant, who has sought to register the mark “FUCT” for use with clothing and whose application had been rejected based on the scandalous or immoral clause. The Federal Circuit held that this clause was also unconstitutional and overturned the rejection.

So How Should Owners of Potentially “Scandalous or Immoral” Marks Proceed?

The constitutionality of the scandalous or immoral clause should remain undecided for the next several months, at least. Should the federal government file a petition for the appeal to be heard by the Supreme Court, the Court would need to grant certiorari. The case would then be heard in the next Supreme Court session, likely resulting in a decision in late 2019 or early 2020.

While the USPTO awaits the final outcome in the Brunetti appeal, it has determined that it shall use its “broad discretion” to continue to review all trademark applications for immoral and scandalous content. Examining attorneys at the USPTO will issue advisory refusals if the applicant’s mark violates the scandalous or immoral clause and suspend the application when or if the only issue barring registration is a scandalous or immoral matter rejection. At Garcia-Zamor, we have already had applications suspended based on this procedure, and we await resolution of this case.

For owners of or users of marks which may contain edgy, provocative, or adult material, we recommend that you consider promptly filing a federal trademark application for your brand. There has never been a better time for such applications since there are no such registrations and relatively few applications on file with the USPTO for marks which contain “scandalous or immoral” subject matter. Filing now can provide the benefit of an earlier filing date and can prevent confusingly similar marks from being registered in the future.

If you have any questions regarding: brand selection, trademarks, trademark searches, responding to patent office actions, franchising, or other intellectual property matters, please contact Garcia-Zamor Intellectual Property Law, LLC.