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Floodgates on "Offensive" Trademarks Not Open Yet

Section 2(a) of the Lanham Act bars registration of trademarks that may “disparage” persons, institutions, beliefs, or national symbols, or bring them into “contempt, or disrepute” (the “disparagement” clause); or that include “immoral” or “scandalous” matter (the “scandalousness” clause).

In June, the Supreme Court held that the disparagement clause violates the First Amendment. See Matal v. Tam, 582 U.S. ___ (2017). In that case, the Court found that the disparagement clause-based denial of an application to register THE SLANTS by the Asian-American lead singer of the Portland-based band of that name infringed the applicant’s free speech rights (and, indeed, his effort to claim a racial slur as a badge of honor). For this reason, the disparagement clause is no longer a ground on which the U.S. Patent and Trademark Office will deny an application for federal trademark registration.

Importantly, however, this decision doesn’t extend to the scandalousness clause. While the constitutionality of that provision is separately being challenged, the case hasn’t yet been decided. See In re Brunetti, No. 15-1109 (Federal Circuit) (considering the registrability of the trademark FUCT for apparel). For now, therefore, any trademark the USPTO deems to be “immoral” or “scandalous” will be placed into suspension (i.e., frozen) until the Bruenetti case directs how those trademarks should be examined.

While trademark law is moving in the right direction, the floodgates have not yet opened on profanity or other trademark elements that some may consider offensive. That time probably will come, but pending the Federal Circuit’s decision in Bruenetti, it’s not here quite yet.

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