IP Law Daily USPTO instructs examiners to suspend scandalous, disparaging mark applications until constitutionality resolved
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Friday, March 11, 2016

USPTO instructs examiners to suspend scandalous, disparaging mark applications until constitutionality resolved

By Thomas Long, J.D.

The USPTO is instructing trademark examiners to continue to screen applications for compliance with the provisions of Lanham Act, Sec. 2(a), barring registration of marks comprising “scandalous,” “immoral,” or “disparaging” subject matter, as the constitutionality of those provisions undergoes scrutiny in the courts, according to a new Examination Guide released March 10. While First Amendment challenges in court remain subject to potential U.S. Supreme Court review, the USPTO will issue only advisory refusals on these grounds. Consistent with normal procedures, the USPTO will be suspending action on pending applications involving marks subject to refusal under them, the Guide said.

Last December, in the case of In re Tam, 808 F.3d 1321, the Federal Circuit, sitting en banc, vacated a decision by the Board to refuse registration of a rock band’s mark THE SLANTS because it was found to be disparaging to Asian-Americans, in violation of Section 2(a). Although the court expressly limited its holding to the “disparagement” restriction in Section 2(a), it opined that the bans on marks comprising disparaging, scandalous, and immoral content were based on the expressive nature of the content, unlike other prohibitions on registration in Section 2(a), which were aimed at preventing consumers from being deceived. The court concluded that under the strict scrutiny review appropriate for government regulation of message or viewpoint, the disparagement proscription of Section 2(a) was unconstitutional on its face. Tam remains subject to potential Supreme Court review, and the USPTO recently applied for an extension of time to file a petition for a writ of certiorari.

The Federal Circuit is expected to decide the question of the “scandalousness” provision in the case of In re Brunetti (No. 2015-1109). In that case, the Trademark Trial and Appeal Board affirmed a trademark examining attorney’s refusal to register the mark FUCT in connection with a line of “streetwear” apparel on the ground that the mark was a “vulgar” term that was precluded from registration pursuant to Section 2(a) of the Lanham Act. The Department of Justice submitted a letter brief to the Federal Circuit in January, opining that the reasoning in the Tam decision also applied to marks deemed “scandalous” or “immoral.” In the DOJ’s view, given the breadth of the Tam decision, there was no reasonable basis for treating the statutory provisions differently.

In a third case—Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439 (E.D. Va. 2015), involving a notorious dispute between Native American activists and the Washington Redskins NFL franchise—the Eastern District of Virginia held that Section 2(a) neither violated the free speech protections of the First Amendment nor was unconstitutionally vague in violation of the Fifth Amendment. That decision upheld a Trademark Trial and Appeal Board order cancelling the registrations of several of trademarks owned by the Washington Redskins on the ground that they may disparage a substantial percentage of Native Americans. An appeal is pending in the Fourth Circuit (No. 15-1874).

Until the legal challenges regarding these provisions of Section 2(a) are resolved, the USPTO will suspend action on applications that are determined to be subject to refusal under them. Any suspension of an application based on the scandalousness provision will remain in place until the Federal Circuit issues a decision in Brunetti, after which the USPTO will re-evaluate the need for further suspension. Any suspension of an application based on the disparagement provision of Section 2(a) will remain in place until at least the last of the following occurs: (1) the period to petition for a writ of certiorari (including any extensions) in Tam expires without a petition being filed; (2) a petition for certiorari is denied; or (3) certiorari is granted and the U.S. Supreme Court issues a decision.

MainStory: TopStory Trademark USPTO

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