Good Time to Try to Register that “#!$@*!ing” Trademark?

by Jaburg Wilk

Jaburg Wilk

On June 19, 2017, the U.S. Supreme Court struck down the disparagement clause of the Lanham Act (15 U.S.C. § 1051 et seq.) in Matal v. Tam (137 S. Ct. 1744), holding that it violates the First Amendment’s free speech clause.   

Before the Matal v. Tam decision, the United States Patent and Trademark Office (“USPTO”) relied on the disparagement clause (15 U.S.C. § 1052(a)) to refuse federal trademark applications that disparaged people, institutions, beliefs, or national symbols. For example, the USPTO used it in 2014 to cancel six of the Washington Redskins’ federally registered trademarks after the NFL team’s name was found to be disparaging toward Native Americans. 

Following the Matal v. Tam decision, many wondered whether courts would strike down other clauses found in § 1052(a) using similar reasoning.  It didn’t take long. On December 15, 2017, the U.S. Court of Appeals for the Federal Circuit held in In Re Brunetti (No. 15-1109) that the portion of § 1052(a) concerning “immoral” or “scandalous” trademarks is an unconstitutional restriction on free speech under the First Amendment. 

For background, Erik Brunetti’s predecessors filed a trademark application for “FUCT” in 2011 for various clothing products and later assigned the application to him. The USPTO examining attorney refused to register the application on the grounds that the mark was scandalous under § 1052(a). On appeal, the USPTO’s Trademark Trial and Appeal Board affirmed the examiner’s decision, concluding that FUCT is vulgar and therefore not registrable.  Brunetti appealed to the Federal Circuit, the same court that issued the 2015 decision (In re Tam, 808 F.3d 1321) that the U.S. Supreme Court later affirmed in Matal v. Tam.  

Discussing both its own In re Tam decision and the U.S. Supreme Court’s reasoning in Matal v. Tam, the Federal Circuit found that the immoral and scandalous provision of § 1052(a) chilled free speech and impermissibly discriminated against certain trademarks based on their content, thereby violating the First Amendment.

Following the In Re Brunetti decision, it remains to be seen whether the USPTO will try to place any limits on future trademark applications containing vulgar, offensive, and disparaging terms. If it turns out that there are no more limits, will applicants finally be free to apply to register their favorite curse words and offensive slogans as federal trademarks?  It depends. Although the USPTO should no longer be able to refuse a trademark application merely for containing offensive or disparaging terms, each trademark applicant must still satisfy the numerous other federal filing requirements. For example, an applicant’s offensive trademark must be used in interstate commerce as a trademark, i.e., it must act as a source indicator for all applied-for products or services. Applicants also must make sure that each applied-for trademark is distinctive and isn’t identical or confusingly similar to any previously registered or applied for trademarks (among numerous other requirements).  

Whether a trademark  application can satisfy these and numerous other USPTO filing requirements depends on the specific trademark and the information provided in each application. As such, applicants should always discuss the particulars of their situation with an experienced trademark attorney before taking on the time and expense of applying.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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