Major Takeaways
First, disparaging marks can now be registered with the PTO. As a result, many expect that the PTO will be flooded with applications for such marks. Others are rather skeptical about such a forecast and contend that offensive or derogatory marks have a limited use in commerce because they appeal only to a certain, narrow category of consumers. Either way, anyone who uses or intends to use any such marks in commerce in connection with their goods or services may now seek federal registration.[3] Second, registration refusals of immoral, deceptive or scandalous marks are likely to be challenged based on the viewpoint discrimination rationale set out in Tam. While the Supreme Court did not directly address the Scandalousness Clause of the Lanham Act, its reasoning lays a foundation for arguing that the PTO’s refusal to register immoral and scandalous marks is unconstitutional, especially in cases where the PTO blends disparaging and scandalous registration denials.[4] Third, the Court’s viewpoint discrimination rationale in Tam provides an argument against trademark registration refusals on the ground of dilution by tarnishment and strengthens the parody defense against such dilution. 15 U.S.C. §§ 1063, 1064, 1125(c)(3).[5] Even more so, the cause of action for dilution by tarnishment itself may become subject to constitutional scrutiny under the First Amendment’s Free Speech Clause. After all, shutting down someone else’s mark just because it may harm the reputation of a famous mark (e.g., by portraying the famous mark in a negative light) is to some degree a viewpoint discrimination. Finally, Tam may also affect examination of patent applications. Currently, the PTO Manual of Patent Examining Procedure (“MPEP”) instructs patent examiners to reject any offensive subject matter disclosed in patent applications.[6] Specifically, it proscribes the disclosure of content that “could be deemed offensive to any race, religion, sex, ethnic group, or nationality” or “might reasonably be considered offensive to any group.” MPEP § 1504.01(e); MPEP § 608.[7] This language echoes both the Disparagement Clause and the Scandalousness Clause of the Lanham Act. Because of Tam, there is a good chance this rule will be scrutinized for freedom of speech issues in the near future. Notably, as opposed to trademark and patent registrations, there is no bar to copyright registration of offensive or obscene material. Rather, copyright law has been content neutral since at least the late 1970s and early 1980s, when the Fifth and Ninth Circuits held that immoral and obscene works of authorship were protected by copyright.[8] Even pornographic works can be registered with the U.S. Copyright Office, as long as they contain a sufficient amount of original authorship and do not fall within the scope of the Child Protection Act. See Compendium of the U.S. Copyright Office Practices, Chapter 300, Section 315 (3rd ed. 2014).[9]The PTO Response
In the wake of the Tam decision, the PTO made a number of changes to the Examination Guidance for Section 2(a).[10] First, the PTO stated that the Disparagement Clause is no longer a valid ground for trademark registration refusal or cancellation. It further noted that: (1) applications that received an advisory refusal based on the Disparagement Clause and were suspended pending the outcome of the Tam litigation would now be removed from suspension and proceed to examination;[11] (2) applications that were previously abandoned after being refused registration may be petitioned for revival if still within the deadline for such a petition; and (3) applications that are beyond the deadline for revival cannot be revived but may be refiled as a new application.[12] The PTO, however, did not explain which basis for revival the petitioners should rely upon – e.g., abandonment due to PTO error or due to unintentional delay, or if these cases require a petition to the PTO Director. 37 C.F.R. §§2.64,2.66, 2.146. Only the second ground for revival requires payment of a petition fee. The PTO amended its rules regarding petitions to revive an abandoned trademark application on June 29, 2017 (within days of making changes to the Examination Guidance for Section 2(a)’s Disparagement Provision).[13] But the rules provide no guidance as to the revival of applications abandoned after being refused registration under the Disparagement Clause. Second, the PTO stated that it does not believe Tam has any bearing on the examination of trademark applications that implicate the Scandalousness Clause. In fact, the PTO noted that: (i) it will continue to examine applications for compliance with the Scandalousness Clause and (ii) applications that received an advisory refusal based on the Scandalousness Clause will remain suspended until the Federal Circuit issues a decision in In re Brunetti, after which the PTO will re-evaluate the need for further suspension. The trademark at issue in In re Brunetti is FUCT for athletic apparel. The PTO denied registration on the ground that the mark is immoral and scandalous as being the phonetic equivalent of the word “Fucked.”[14] Following the Supreme Court’s decision in Tam, the Federal Circuit ordered the parties in In re Brunetti to submit supplemental briefings discussing how the constitutionality of the Scandalousness Clause should be resolved in light of Tam reasoning. The PTO (the Appellee) and Erik Brunetti (the Appellant) submitted their briefs on July 20 and August 9, respectively. In its brief to the Federal Circuit, the PTO stated that Supreme Court’s decision in Tam “provides no basis for invalidating” the Scandalousness Clause. First, the PTO asserted that as opposed to the Disparagement Clause that was found unconstitutional as being viewpoint discriminative, the Scandalousness Clause is viewpoint neutral; hence, consistent with the First Amendment. Second, in denying registration to scandalous marks, the PTO pursues “a substantial government interest in protecting order and morality” as well as “the orderly flow of commerce.” The PTO, however, did not provide any evidence to show harmful effects the scandalous marks have on order and morality or the orderly flow of commerce.[15] Interestingly, in its letter brief last year, the PTO conceded that the Federal Circuit’s ruling in In re Tam meant there is no longer any “reasonable basis” for treating scandalous and disparaging marks differently.[16] The PTO also added that it does not believe that the Scandalousness Clause can withstand challenge under the current law of the Federal Circuit.[17] Nevertheless, it chose to continue with suspensions based on the Scandalousness Clause and to argue in its recent brief that “the two provisions need not rise or fall together.” In response to the PTO’s brief, Erik Brunetti raised several points in his brief to the Federal Circuit. First, the Scandalousness Clause is unconstitutional at least on two grounds – the First Amendment Free Speech Clause per Tam and the vagueness doctrine.[18] Second, it is not for the PTO to engage in inquiries of morality; rather retailers and consumers will make their own decisions whether to buy goods and services bearing marks that some may perceive as vulgar, scandalous or immoral. The Federal Circuit heard the parties’ oral arguments on August 29, 2017. The three-judge panel did not seem convinced by the PTO’s arguments, but was rather concerned with the level of inconsistency among the PTO’s rejections and acceptances of the same words depending on the context of the marks.[19] It will be interesting to see how the Federal Circuit decides In re Brunetti and whether this case reaches the Supreme Court. In the meantime, the Supreme Court’s decision in Tam has resolved the uncertainty around the Disparagement Clause. Before Tam, the Disparagement Clause restricted free, expressive speech by denying registration to marks that the PTO deemed offensive. To be sure, the owners of disparaging marks were free to continue using them in commerce. But they were denied the myriad and substantial benefits of federal trademark protection. After Tam, disparaging marks, no matter how derogatory or offensive they might be, can now receive federal protection as long as they satisfy the registerability requirements set forth in the Lanham Act. Time to go on the offensive![1] Matal v. Tam, 582 U. S. ____, 7, 26 (2017), https://www.supremecourt.gov/opinions/16pdf/15-1293_1o13.pdf.
[2] Here are some more examples of marks that were refused registration by the PTO based on the Disparagement Clause before Tam: (1) HEEB for a Jewish website seeking to reclaim an ethnic slur – refused registration as offensive to a substantial composite of Jewish community; (2) REDSKINS for professional football contests – refused registration as disparaging to Native Americans; (3) KHORAN for wine – refused registration as offensive to Muslims because Islam forbids alcohol consumption; (4) CRACKHEAD JESUS for T-shirts – refused registration as disparaging to Christians because it suggests Jesus to be “an addict of crack cocaine”; (5) CHRISTIAN PROSTITUTE for clothing and shoes – refused registration as disparaging to Christians because Christians believe prostitution to be a sin; (6) LESBO for clothing – denied registration as a derogatory term often used to slur gay females; (7) AMERICAN FAGGOT for books about being a gay male in America – denied registration as offensive to gay males. [3] Here are a few examples of trademark applications post-Tam: (1) CRACKHEAD JESUS for novels and series of fiction books and short stories (this application was filed by the same individual as one that was previously refused by the PTO for disparagement); (2) NIGGER PLEASE for shirts; (3) NIGGA for various classes of goods and services, including hair accessories, non-alcoholic drinks, electric cigarettes, bumper stickers, watch repairs, entertainment services, etc.; (4) CHINK for online retail store (this term is an English-language ethnic slur usually referring to a person of Chinese descent); (5) DRINK UP BITCHES for clothing.[4] Jasmine Abdel-khalik, Disparaging Trademarks: Who Matters, 20 Mich. J. Race & L. 287, 310-15 (2015), available at https://repository.law.umich.edu/mjrl/vol20/iss2/3.
[5] Armen N. Nercessian & Matthew B. Becker & Eric Ball, Supreme Court Rocks the Trademark Office in ‘Slants’ Case (June 26, 2017), https://www.ipwatchdog.com/2017/06/26/supreme-court-rocks-trademark-office-slants-case/id=84967/.
[6] Manual of Patent Examining Procedure of the U.S. Patent and Trademark Office, Chapter 1500, Section 1504.01(e) (9th ed., rev. July 2015),https://www.uspto.gov/web/offices/pac/mpep/s1504.html.
[7] Manual of Patent Examining Procedure of the U.S. Patent and Trademark Office, Chapter 0600, Section 608 (9th ed., rev. July 2015), https://www.uspto.gov/web/offices/pac/mpep/s608.html#d0e42401.
[8] Zvi S. Rosen, Tam, The First Amendment, and Copyright (June 29, 2017), https://zvirosen.com/2017/06/29/tam-the-first-amendment-and-copyright/.
[9] Compendium of the U.S. Copyright Office Practices, Chapter 300, Section 315 (3rd ed., Dec. 2014), https://www.copyright.gov/comp3/chap300/ch300-copyrightable-authorship.pdf.
[10] The U.S. Patent and Trademark Office, Examination Guide 1-17: Examination Guidance for Section 2(a)’s Disparagement Provision after Matal v. Tam and Examination for Compliance with Section 2(a)’s Scandalousness Provision While Constitutionality Remains in Question (June 26, 2017), https://www.uspto.gov/sites/default/files/documents/Exam%20guide%2001-17.docx.
[11] E.g., the mark THE SLANTS at issue in Tam was registered with the PTO on November 14, 2017, https://tsdr.uspto.gov/#caseNumber=85472044&caseType=SERIAL_NO&searchType=statusSearch.
[12] The deadline to file a petition to revive is no later than two months after the notice of abandonment issued or two months after the applicant learned of the abandonment, but not later than six months after the PTO trademark electronic records system indicated that the application was abandoned, where the applicant did not receive the notice of abandonment. 37 C.F.R. §2.66(a).
[13] Revival of Abandoned Applications, Reinstatement of Abandoned Applications and Cancelled or Expired Registrations, and Petitions to the Director, 82 Fed. Reg. 29,401, 29,407-09 (June 29, 2017), available at https://www.gpo.gov/fdsys/pkg/FR-2017-06-29/pdf/2017-13519.pdf.
[14] In re Brunetti, Serial No. 85310960 (August 1, 2014) [not precedential], https://ttabvue.uspto.gov/ttabvue/ttabvue-85310960-EXA-28.pdf.
[15] Erik Brunetti makes this point in his brief to the Federal Circuit.
[16] Bill Donahue, Even Before Slants, Offensive TM Ban Always An Awkward Fit (June 20, 2017), https://www.law360.com/articles/936415/even-before-slants-offensive-tm-ban-always-an-awkward-fit.
[17] Bill Donahue, USPTO Says Slants Ruling Would Nix Scandalous TM Ban, Too (January 22, 2016), https://www.law360.com/articles/749948.
[18] Specifically, Erik Brunetti noted that had the Supreme Court needed to reach the vagueness issue in Tam, it would have probably agreed that the entirety of Section 2(a) was unconstitutionally vague. In reaching such a conclusion, he referred to Tam’s footnote 5, at 11-12: “The PTO has acknowledged that the guidelines ‘for determining whether a mark is scandalous or disparaging are somewhat vague and the determination of whether a mark is scandalous or disparaging is necessarily a highly subjective one.’ In re In Over Our Heads, Inc., 16 USPQ 2d 1653, 1654 (TTAB 1990) (brackets and internal quotation marks omitted).” The PTO has similarly observed that whether a mark is disparaging “is highly subjective and, thus, general rules are difficult to postulate.” Harjo v. Pro-Football Inc., 50 USPQ 2d 1705, 1737 (TTAB 1999), rev’d, 284 F. Supp. 2d 96 (DC 2003), rev’d and remanded in part, 415 F. 3d 44 (CADC 2005) (per curiam).’
[19] Jimmy Hoover, Fed. Circ. Hammers Gov’t Defense Of ‘Scandalous’ TM Ban (August 29, 2017), https://www.law360.com/articles/958885.