Don’t Miss Out on Protecting Your New Provocative Brand With Federal Trademark Registrations. The US Patent and Trademark Office can no Longer Refuse Registration Because They Think Your Brand is Explicit, Obscene, Or Unseemly.

Jul 15, 2019

The Supreme Court recently decided that the prohibition against the registration of “immoral or scandalous” trademarks according to the Lanham Act is in violation of the First Amendment. 15 U.S.C.S. § (2019). The Supreme Court affirmed the judgement of the Court of Appeals in the case of Iancu v. Brunetti, 139 S. Ct. 2294 (2019) where respondent sought registration of his trademark for a clothing line. Just what mark was in question until now? FUCT.

Following a line of logic stemming from the Supreme Court’s decision in Matal v. Tam, 137 S. Ct. 1744 (2017), the majority holding in the 6-3 decision can be summarized as follows: the “immoral or scandalous” clause of the Lanham Act discriminates on the basis of view-point, and, therefore, the “immoral or scandalous” clause must be in violation of the First Amendment. The Supreme Court previously decided that it is a “bedrock First Amendment principle” that the government cannot discriminate against “ideas that offend.” Iancu (citing Tam). The Supreme Court rejected the Government’s argument that the clause was “view-point neutral” and, using the plain language of the Act and the accompanying dictionary definitions, decided firmly that the “immoral or scandalous” clause was indeed view-point based.

So, just what does this decision mean for owners of marks with edgy, provocative, or adult material? We recommend that your marks be filed promptly with the United States Patent and Trademark Office (USPTO). This decision suggests a high likelihood of success for the registration of various marks that were previously rejected for being immoral or scandalous. For the first time since the Lanham Act was signed into law, owners of marks previously thought to be too lewd for registration may finally be able to get the protection they deserve for their brands.

How far will the USPTO being able to take this new ruling? While it may be too soon to tell, it seems as though the door is now wide open for all types of marks. As long as your mark satisfies the basic requirements (no likelihood of confusion, not merely descriptive or generic, etc.) of being a trademark, then there appears to be very few bars to receiving protection 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.