Disparagement and Scandal at SCOTUS – How the questionable constitutionality of Section 2(a) of the Lanham Act may impact your disparaging or scandalous mark

FS_Test-2By Matthew Burkett, attorney

The Supreme Court of the United States (SCOTUS) recently granted a petition for writ of certiorari, submitted by the United States Patent and Trademark Office (USPTO), to decide whether the disparagement provision of the Lanham Act is facially invalid under the First Amendment. The disparagement provision resides in Section 2(a) of the Lanham Act and states that a trademark which “[c]onsists of…matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…” may not be registered.

The issue arrived at SCOTUS after the Federal Circuit’s decision in In re Tam, 808 F.3d 1321 (Fed. Cir. 2015) (en banc), which found that the USPTO’s refusal to register “disparaging” marks under Section 2(a) of the Lanham Act violates the First Amendment. According to the Federal Circuit, “the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others.”

The particular mark at issue in In re Tam is THE SLANTS, which the USPTO previously refused to register because it found the mark disparaging to people of Asian descent. The mark was applied for by Simon Shiao Tam, a member of a band which uses THE SLANTS as their name and promotes itself as “the first and only all-Asian American dance rock band in the world.” In his respondent brief to the certiorari petition, Mr. Tam agreed with the USPTO that certiorari should be granted to decide the important issue of whether the disparagement clause of the Lanham act goes against the First Amendment. Until the Supreme Court decides, Mr. Tam “waits in limbo” as to whether he will secure trademark rights.

Much like Mr. Tam, others may also be waiting in limbo over their trademark rights while SCOTUS analyzes the battle between disparagement and the First Amendment. For example, other parties may be facing a disparagement rejection at the USPTO for their desired trademarks, or may be wondering whether to even apply for registration of a mark that has the potential to offend others. In any event, a preliminary examination guide titled “Examination for Compliance with Section 2(a)’s Scandalousness and Disparagement Provisions While Constitutionality Remains in Question,” details the USPTO’s plan during this “limbo” period.

If your applied-for mark is currently facing a disparagement rejection, you are likely already aware that the USPTO is suspending action on pending applications involving marks subject to disparagement refusal under Section 2(a). This suspension will remain until SCOTUS issues a final decision on the Tam case. If you are wondering whether to file an application for a potentially disparaging mark, the USPTO will continue to examine new applications for compliance with the provisions in Section 2(a) during the limbo period. However, the USPTO will only issue advisory Section 2(a) refusals against new applications for marks having scandalous, immoral, or disparaging matter. If the only issue against a mark’s registrability is based on Section 2(a) grounds, the examining attorney will issue a first Office Action which identifies the reasons for the advisory refusal and suspends action on the application. If other requirements or refusals were made in the first Office Action, you will need to address and overcome those issues before the examining attorney will suspend action on the application. In other words, the examining attorney will not issue a final refusal under Section 2(a) for now. Again, any Section 2(a) disparagement based suspension of an application will remain in place until SCOTUS issues a decision.

SCOTUS typically decides all cases within the timeframe of its present term. Terms begin on the first Monday of each October (October 3, 2016 in this case), and continue until June or early July of the following year (June or July of 2017 in this case). Therefore, the Section 2(a) limbo period has the potential to last until as late as July 2017, depending on how long it takes SCOTUS to make a decision. However, waiting until after SCOTUS makes a decision before filing an application for your potentially disparaging mark may have negative consequences, such as losing out on benefits of a federal trademark registration to a third party.

For example, assuming SCOTUS finds Section 2(a) unconstitutional, superior trademark rights may go to the applicant who files for its disparaging mark first. Section 7(c) of the Lanham Act provides that, contingent on registration of the mark, the mere filing of an application constitutes constructive use of the mark as of that filing date, and gives that applicant exclusive right over those goods or services named in the application. This “constructive use priority” has exceptions, however, such as when someone else files for the mark before you, or someone else establishes use of the mark in commerce prior to your filing date. Therefore, brand owners who currently only have intent to use a disparaging mark should file their applications as soon as possible. Doing so will increase the chances of having superior rights over others with the same intent to use the same disparaging mark, and may even secure some rights over prior users.

Brand owners who have already established use of a disparaging mark in the marketplace, but have not attempted to register their mark because of Section 2(a), also should not wait to file. Assuming again that SCOTUS rules against the constitutionality of Section 2(a), idle prior mark users run the risk of a junior mark user filing first and obtaining a registered disparaging mark. In this case, the Lanham Act provides that registration of a mark on the principal register constitutes nationwide constructive notice of the junior user’s use of the mark. As such, the first user may be limited to common law rights only in the geographic areas where the first user was operating prior to the junior user’s registration date. Therefore, established brand owners should also be diligent in filing applications for disparaging marks they currently use. Doing so will help to ensure superior rights to the disparaging mark over subsequent junior users, assuming the mark is otherwise registrable.

Moreover, during the limbo period and after a hypothetical finding that Section 2(a) is unconstitutional, it is possible that a large number of applicants will file for arguably disparaging, profane, or offensive marks. Under the Lanham Act, prior users with an unregistered disparaging mark can both petition to oppose junior use applications and petition to cancel a junior user’s registration within five years of the registration date. As such, brand owners who have been using disparaging marks should be watchful of potential junior use filers.

In any event, guidance from SCOTUS regarding Section 2(a) is long overdue. Just ask Mr. Tam, who had his mark for THE SLANTS rejected by an examiner as being disparaging, a decision which the Trademark Trial and Appeal Board (TTAB) and an earlier panel of the Federal Circuit agreed with, only to have the en banc panel in In re Tam vacate the TTAB’s holding that THE SLANTS is unregistrable. Or ask the Washington Redskins about the TTAB ordering the cancelation of their marks in 2014, based on grounds that the marks may disparage Native Americans, despite previous registrations in 1967, 1974, 1978, and 1990. Or ask the USPTO why the mark HAVE YOU HEARD SATAN IS A REPUBLICAN is disparaging but the mark THE DEVIL IS A DEMOCRAT is not, or why the marks DANGEROUS NEGRO, STINKY GRINGO, and MIDGET-MAN have all been registered. Regardless of personal feelings of offensiveness, the apparent arbitrary interpretation of these and other marks’ disparaging character could use some guidance for consistency. Hopefully SCOTUS will be able to provide just that when it decides whether Section 2(a) of the Lanham Act violates the First Amendment.

Matthew is an attorney with Fay Sharpe LLP. If you have questions about the contents of this article or IP law, you may reach Matthew at mburkett@faysharpe.com or 216.363.9126.