Disparaging Trademarks May Be On The Rise

On June 19, 2017, the U.S. Supreme Court ruled in Matal v. Tam (Case No. 15-1293) that the Trademark Act’s prohibition on registration of “disparaging” marks was unconstitutional.  The USPTO had refused to register an application for THE SLANTS filed by the Portland-based band on grounds that it was disparaging to Asians under the “Disparagement Clause” of the Trademark Act (Section 2(a)).  The Disparagement Clause bars registration of trademarks which may disparage persons, institutions, beliefs or national symbols or “bring them into contempt or disrepute.” The Asian-American band members argued that they intended the mark “reclaim” the offensive phrase and “drain” it of derogatory meaning. The band appealed the refusal to the Federal Circuit, which held that the Disparagement Clause unconstitutionally restricts free speech and this decision was affirmed.  The Supreme Court reasoned that the Disparagement Clause amounted to impermissible viewpoint discrimination – where the government restricts speech solely because it was disagreeable.  This decision does not address the Trademark Act’s ban on registering “immoral, deceptive or scandalous matter,” although this matter is being addressed in an appeal before the Federal Circuit (In Re Brunetti), which addresses the USPTO’s refusal to register FUCT for apparel, including children’s apparel. This case will also be informative for the REDSKINS’ owners whose trademarks were cancelled in 2014 under the Disparagement Clause as disparaging to Native Americans.  There are numerous alcoholic beverage brand names that were refused based on the Disparagement Clause, including BULLSHIT and KHORAN and would now be considered registrable.