How “The Slants” Case Changes the Landscape for Immoral Trademarks

As originally envisioned, section 2(a) of the Lanham Act prohibits registration of scandalous, deceptive, disparaging or immoral trademarks. Last week in Matal v. Tam (a.k.a., “The Slants case”), however, the Supreme Court affirmed a lower court decision that the USPTO’s refusal to register the proposed trademark “THE SLANTS” on disparagement grounds was an unconstitutional violation of free speech. As a result, words that we would not normally use “in polite conversation” are no longer deemed unsuitable for federal trademark protection.

How the Supreme Court’s Decision in Matal v. Tam Changes the Landscape for Immoral Trademarks

First, the ruling is likely to turn the tide for anyone currently challenging the USPTO over refusal to register an allegedly disparaging mark, such as the long running case involving the Washington Redskins football team. In 2014, the team had six of its marks cancelled because the USPTO found them to be disparaging of Native Americans. Following Tam, it’s a safe bet that the Redskins, and anyone who’s recently been refused registration on similar grounds, will return to court to have their marks reinstated.

Second, it’s important to remember that the Tam decision doesn’t require the USPTO to register disparaging marks, it just prevents them from refusing to do so based on a determination that they’re disparaging. The Office will still need to make a determination regarding whether the proposed mark is likely to be confused with an existing mark, or whether proposed mark is simply descriptive. In other words, don’t expect to see scandalous variations on widely-recognized name brands in stores any time soon.

The holding in Tam may also have ramifications in other areas of the law. For example, section 1504.01(e) of the Manual of Patent Examining Procedure (MPEP) directs that “design applications which disclose subject matter which could be deemed offensive to any race, religion, sex, ethnic group, or nationality, such as those which include caricatures or depictions, should be rejected. . . .” Under section 608 of the MPEP, examiners are also instructed to object to any language “that could be deemed offensive to any race, religion, sex, ethnic group, or nationality.” Similarly, the Tax and Trade Bureau prohibits language that is obscene or indecent from appearing on labels for alcohol. In the wake of Tam, we are likely to see further challenges to government regulations that arguably involve impermissible viewpoint discrimination on the part of the government in a manner similar to that of Section 2(a).

For anyone who’s worried about a potential flood of scandalous trademarks entering the market, it’s possible that industry self-interest may still stop some from attempting to register offensive trademarks. For example, the Brewers Association code governing members’ marketing and advertising prevents the use of marks and materials that “contain sexually explicit, lewd or demeaning brand names, language, text, graphics, photos, video or other images that reasonable adult consumers would find inappropriate for consumer products offered to the public” and/or “contain derogatory or demeaning text or images.” We will have to wait and see to what extent self-policing picks up where the USPTO must now leave off.

Lastly, it’s important to remember that the Court in The Slants case only considered section 2(a)’s disparagement provision. A lower court is still considering the constitutionality of the Lanham Act’s scandalousness provision, and the USPTO continues to examine applications for compliance with that provision. As a result, the gloves may be off for disparaging trademarks, but any suspension of an application based on the scandalousness provision of Section 2(a) will remain in place until the Federal Circuit issues its decision regarding section 2(a)’s scandalousness provision.

Do you run a business with a suggestive or provocative name that you’ve been hesitant to register? Drop us a line and let’s talk about what this means for your business.