The recent Supreme Court decision, Matal v. Tam, is the closest most trademark lawyers get to a professional discussion of sex, drugs, and rock n’ roll. In this case, Simon Tam, the lead singer of the rock band The Slants, filed a federal lawsuit because the United States Patent and Trademark Office (“USPTO”) refused to register a trademark for the band’s name. The application was denied registration because of a provision in the Lanham Act (commonly referred to as the Trademark Act), which prohibits registrations of trademarks that “may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” (emphasis added). This provision is commonly referred to as the “disparagement clause.” Football fans may be familiar with the disparagement clause because it was used to cancel six federal trademark registrations associated with the Washington Redskins in 2014 because the word “redskins” is considered by many to be an offensive term for Native Americans.
In refusing to allow the trademark application for THE SLANTS to move forward, the USPTO examining attorney pointed to the historical use of the term “slants” as offensive when applied to those of Asian descent. For the record, the members of The Slants are Asian-American rock musicians, and part of their stated goal in adopting the racially charged name was to “reclaim and take ownership of stereotypes about people of Asian ethnicity.” After the band’s application was blocked, Tam appealed through the Trademark Trial and Appeal Board (“TTAB”), but was still refused registration. Tam eventually filed a lawsuit, and an en banc panel of the Federal Circuit Court sided with the band, finding the disparagement clause to be unconstitutional on its face. The Government filed a petition for certiorari with the Supreme Court of the United States (“SCOTUS”). SCOTUS also sided with the band, and found the disparagement clause to be unconstitutional viewpoint discrimination under the Free Speech Clause of the First Amendment. As a result, the trademark application for THE SLANTS, used in connection with “Entertainment in the nature of live performances by a musical band” in International Class 041, was published for opposition on August 29, 2017. Sports fans will also be interested to know that in the wake of the Matal v. Tam decision, the legal action surrounding the cancellation of the Washington Redskins federal trademark registration also ended in favor of the team.
Free speech and social justice motivations aside, shrewd business people usually do not intentionally pursue offensive trademarks. So why is the Matal v. Tam decision so significant? Now that the Supreme Court has held the disparagement clause to be an unconstitutional restriction on speech, the ban on “immoral” or “scandalous” trademarks is likely next up on the chopping block. Currently, “immoral” or “scandalous” marks are blocked by the USPTO in the same way that “disparaging” trademarks were blocked before the Matal v. Tam decision. This open issue of whether blocking “immoral” or “scandalous” trademarks violates free speech in light of the Matal v. Tam decision will be addressed at oral argument on August 29, 2017 in a pending Federal Circuit case, In Re Brunetti. In Brunetti, the USPTO denied a trademark application for FUCT used in connection with apparel because FUCT was considered by the examiner to be “immoral” or “scandalous” as it contained either the past tense of the “F word” or the phonetic equivalent of the “F word.” Moving forward, if “scandalous” and “immoral” marks are given the same green light as “disparaging” marks, the USPTO may be faced with an influx of applications for previously unattainable marks. For many trademark applicants and trademark holders, this potential influx of applications may require some planning and forethought to avoid any unnecessary delays when preparing new applications or submitting maintenance filings to keep existing trademarks live.
The USPTO is already backlogged with new and pending trademark applications, and the lag time may continue to increase as the USPTO grapples with the administrative procedures to properly examine the previously impermissible trademark applications. We routinely inform our clients and potential clients that a wait time of four months to have an examining attorney assigned to a new trademark application is not uncommon, and it may take up to two months to have specimens of use reviewed by an examining attorney. With this potential influx of USPTO activity, if your business is thinking of growing an existing brand, or exploring a new federal trademark application in the near future, the process and timeline of clearing and obtaining a new trademark registration is worth discussing with a trusted legal professional to avoid any surprises.