Trademarks and the Disparaging Clause
Posted дээр 04-09,2018, at 11:34 am.

Trademarks permit consumers to identify the source of goods or services. Since consumers assume that the products or services from the same source will be consistent, trademarks allow consumers to make meaningful choices among competing products and services. Moreover, the purpose of trademark law is to ensure that consumers are able to rely on marks in exercising their preferences by prohibiting competitors from using marks in a way that confuses consumers about the source of a product or service.  


While the benefits of registering a trademark may be great, there are certain limitations concerning the registration. For instance, section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), precludes registration of trademarks that “may disparage ... persons, living or dead, institutions, beliefs, or national symbols, [that] bring them into contempt, or disrepute.” This provision, commonly known as the “disparagement clause,” may also be used to cancel registered trademarks (e.g., six registered trademarks of a NFL football team, Washington Redskins, were cancelled by the Trademark Trial and Appeal Board in 2014. See Amanda Blackhorse, et al. v. Pro-Football, Inc., 111 USPQ2d 1080 (TTAB 2014).


The U.S. Court of Appeals for the Federal Circuit, however, recently held that the disparagement clause was an unconstitutional restriction of free speech in a case involving an Asian-American dance-rock band that sought to register a trademark for its provocative name, ‘the Slants.’ See In re Simon Shiao Tam, 808 F.3d 1321 (Fed. Cir. 2016)(en banc)(“It is a bedrock principle underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys.”)


More recently, the Supreme Court affirmed the Court of Appeals for Federal Circuit's decision holding that the disparagement clause amounts to view point discrimination even though it evenhandedly prohibits disparagement of all groups. Justice Alito wrote, “[i]t applies equally to marks that damn Democrats and Republicans, capitalists and socialists, and those arrayed on both sides of every possible issue. It denies registration to any mark that is offensive to a substantial percentage of the members of any group. But in the sense relevant here, that is view point discrimination. Giving offense is a viewpoint.” See Matal v. Tam ("Tam"), 582 U.S. ___ , No. 15-1293, Slip Op. (June 19, 2017).


The Supreme Court’s ruling will likely result in a flood of trademark applications for trademarks that to some may be similarly offensive. And some applicants that were previously denied under the disparagement clause will likely re-file their applications that include all sorts of words, names and symbols that can be considered offensive or otherwise disparaging.


TAM also opens the door to similar constitutional challenges to a related Lanham Act provision preventing registration of marks that consists or comprises of “immoral, deceptive, or scandalous matter.” This provision is likely to be struck down under the First Amendment and may also be challenged under the void for vagueness doctrine derived from the due process clause of the Fifth Amendment to the U.S. Constitution.


Please note that this article is for informational purposes only and does not constitute legal advise. If you have questions regarding your particular situation, please contact a qualified attorney.

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