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Wednesday, June 28, 2017

Constitutionality of Trademark Law's Scandalous Provision Remains Questionable after Supreme Court Decision Invalidating Disparagement Provision

Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), bars registration of marks that consist of or comprise matter which may disparage persons, institutions, beliefs, or national symbols, or bring them into contempt or disrepute (“the disparagement provision”), and marks that consist of or comprise immoral or scandalous matter (“the scandalousness provision”).  These provisions were challenged in separate court actions as unconstitutional under the Free Speech Clause of the First Amendment.  See Matal v. Tam, No. 15-1293 (U.S. Supreme Court on petition for certiorari from in In re Tam, No. 14-1203 (Federal Circuit) (disparagement provision) and In re Brunetti, No. 15-1109 (Federal Circuit) (scandalousness provision).  In 2015, the Federal Circuit held that the disparagement provision constitutes viewpoint discrimination and is facially unconstitutional under the First Amendment’s Free Speech Clause.  In re Tam, 808 F.3d 1321, 1358, 117 USPQ2d 1001, 1025 (Fed. Cir. 2015) (en banc), as corrected (Feb. 11, 2016).  On June 19, 2017, the Supreme Court of the United States decided Matal v. Tam, 582 U.S. ___ (2017), which affirmed the judgment of the Federal Circuit.  Id.  The Federal Circuit has ordered the parties to submit supplemental briefing in Brunetti explaining how the constitutionality of the scandalousness provision should be resolved in light of the Supreme Court’s decision in Tam.

The United States Trademark Office ("USPTO") has been suspending action on pending applications involving marks subject to refusal under the disparagement and scandalousness provisions until the Tam and Brunetti litigations conclude.

Because the constitutionality of the scandalousness provision remains pending before the Federal Circuit in Brunetti, the USPTO will continue to suspend examination of an application based on the scandalousness provision of Section 2(a) until the Federal Circuit issues a decision in Brunetti, after which the USPTO will re-evaluate the need for further suspension.

6:11 am cdt 

Thursday, June 22, 2017

You can go disparage yourself (or others)!

The U.S. Supreme Court recently ruled that the Trademark Office's rejection of trademarks that "disparage" others violates the First Amendment.

The decision may pave the way for the Washington Redskins’ to keep the team’s controversial name.

The ruling came in a case that involved an Asian American rock group called the Slants, which tried to register the band’s name in 2011. The band was turned down by the U.S. Patent and Trademark Office because of a law against registering trademarks that are likely to disparage people or groups.

The Supreme Court ruled the “disparagement clause” of the federal trademark law was not constitutional, even though it was written evenhandedly, prohibiting trademarks that insult any group.

“This provision violates the Free Speech Clause of the First Amendment,” Justice Samuel A. Alito Jr. wrote in a section of the opinion supported by all participating justices. “It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

6:53 am cdt 

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