The Federal Circuit just ruled that the “scandalous” clause of the Lanham Act is unconstitutional in view of the Supreme Court decision in Matal v. Tam. The Lanham Act is also known as the Trademark Act.
As a refresher, Matal v. Tam involved the Asian-American rock band The Slants. The Slants filed a trademark application to register their band name with the United States Patent and Trademark Office (USPTO). The office rejected the band’s application.
Relying on the disparagement clause of the Lanham Act, the USPTO found the name “The Slants” was offensive toward Asian-Americans. The Supreme Court eventually heard the case and ruled in favor of the Slants, determining that the disparagement clause “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”
In December 2017, the Federal Circuit determined in In re: Brunetti that the “scandalous” clause of the Lanham Trademark Act that bars trademarks that are either scandalous or immoral is unconstitutional as well. The Trademark Act governs trademarkability and false advertising.
First Amendment “protects private expression, even private expression which is offensive to a substantial composite of the general public.”
The applicant, Erik Brunetti, sought to register the mark “fuct” for apparel. The USPTO denied registration, citing the scandalous nature of the mark. On appeal, the Federal Circuit noted that “[t]he trademark at issue is vulgar.”
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Despite the vulgarity of the mark, the First Amendment “protects private expression, even private expression which is offensive to a substantial composite of the general public.” The Court also noted that the USPTO failed to offer a substantial government interest for policing offensive speech.
This decision marks the latest seismic shift in trademarkability, but one that many experts saw coming after the Matal decision.
The Brunetti and Matal decisions open the door for registration of a lot of trademarks that were previously deemed unregisterable under the Lanham Trademark Act. These decisions suggest that there is no such thing as a disparaging or scandalous mark and that the USPTO will no longer be the arbiter of good taste. Effectively, nothing is off-limits when it comes to nontraditional brand identifiers.
These decisions suggest that there is no such thing as a disparaging or scandalous mark and that the USPTO will no longer be the arbiter of good taste.
However, just because a mark can be registered doesn’t mean that it should. Businesses should look to their customer base and the marketplace when determining whether an edgy mark that was once considered disparaging or scandalous is a wise business decision. What’s true for The Slants and fuct might not be true for every business.
Meghan Nugent is an associate with SpencePC. She has extensive experience assisting clients in both transactional and litigation matters of all natures. The focus of her practice is Intellectual Property. She also assists the firm’s clients in the prosecution and litigation of trademarks.
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