After disparagement ax, attorneys eyeing ‘scandalousness’

LEGAL ENTERTAINMENT

On June 19, the U.S. Supreme Court held that the disparagement provision in Section 2(a) of the Lanham Act, 15 U.S.C. Section 1052(a), is an unconstitutional content-based restriction on speech. Matal v. Tam, 2017 DJDAR 5793. The provision rejected trademark registrations containing language that may “disparage … persons, living or dead … or bring them into contempt or repute.”

The decision comes after a long battle started by the Asian-American band called The Slants. The band attempted to file for federal registration of their band name in 2011, but were denied because the name would likely disparage other people. The band argued that they were attempting to “recapture” the name to aide the term in becoming socially acceptable, and remove the disparaging connotation. The U.S. Patent and Trademark Office denied their argument. The Slants took the next step and filed a lawsuit in federal court in 2015.

To decide whether a mark contains disparaging content, the examining attorney reviews the mark in light of two elements. First, the examiner considers the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services. If that meaning is found to refer to identifiable persons, institutions, beliefs or a national symbol, then the examiner looks to whether that meaning may be disparaging to a substantial composite of the referenced group.

The government argued that the disparagement provision was constitutional as it involved government speech and that registration was a type of government subsidy or program. The Supreme Court rejected all of the government’s arguments.

The government tried to argue that the action of an examiner deciding the disparaging aspect of the mark is a form of governmental speech. Government speech cannot be viewpoint neutral; if it were required to be, that would paralyze government action — generally, the government takes one course of action and rejects others. The Supreme Court, however, explained that allowing a government entity to pass off private speech as governmental speech simply by putting their stamp of approval on it would silence or muffle free speech. Trademarks are imagined and put into place by individuals and their respective businesses, and are thus private speech. Justice Samuel Alito wrote that banning speech on the basis that it expresses ideas that offend others essentially offends the bedrock of the First Amendment principal. Furthermore, the Supreme Court said the registration process is not either a government subsidy or program, because the applicant is paying the government for the registration and protection.

The Supreme Court’s decision opens the door for The Slants and others to apply and obtain — or regain — trademark registration. For instance, the Washington Redskins NFL team lost their trademark registration in 2014 for “Washington Redskins.” The team has been awaiting the outcome of Tam to attempt to regain their trademark rights, which were cancelled after over 40 years of registration. The original registration was granted in 1974, but was cancelled after five Native Americans challenged the team’s registrations. The Trademark Trial and Appeal Board found that the opposers carried their burden to show that the term “redskins” was disparaging, and cancelled the registrations. Now, the Washington Redskins, along with others, can attempt to regain their federal protections.

After the decision, the USPTO released an announcement on how the case affects review under the Trademark Manual of Examining Procedure. The USPTO explains that it will no longer refuse an application for registration on the basis that the mark may “disparage … or bring … into contempt, or disrepute.” The respective provisions within Section 1203 of the Trademark Manual of Examining Procedure will no longer apply. Any application that received a suspension or refusal under the disparagement provision will be removed from suspension and be reviewed once again. If the application was abandoned after being refused, the applicant can file a new application for review.

Many attorneys believe this decision may add a little predictability in the “lottery” that is the trademark registration process. Even though the above-mentioned elements were applied for many years, looking through the history of applying the provision, the test results were inconsistent. Individual examining attorneys review applications, causing a variance in whether a mark was considered disparaging. Justice Alito wrote in Tam that “the vagueness of the disparagement test and the huge volume of applications has produced a haphazard record of enforcement.” For example, both the marks “Queer Eye for the Straight Guy” and “Queer as Folk” for a TV show were able to muster through the application process while “Dykes on Bikes” was refused as disparaging (which was later accepted due to a successful response to the office action letter). Thus, the Tam decision may bring some consistency in the trademark registration process

Attorneys are now keeping their eye on court proceedings involving another provision of Section 2(a) — the “scandalousness” provision, which bars the registration of marks that consist of or comprise “immoral, deceptive, or scandalous matter.” The outcome of Tam may have an effect on the provisions constitutionality, which was brought into question in the In re Brunetti case. In that case, the plaintiff filed to register the mark “FUCT.” Due to the phonetical equivalence to well-known profanity, the mark was denied under the scandalousness provision. After denial from the USPTO, the case was brought to federal court. On June 20, the U.S. Court of Appeals for the Federal Circuit asked each respective party to submit a supplemental briefing on how the constitutionality of the scandalousness provision should be resolved in light of Tam. After reviewing the reasoning of the Supreme Court, many seem to predict that this case will end the same as Tam. All will have to wait to see how the Federal Circuit will rule on this case, which could bring even more predictability to the process.