By: Quendesmond Kellum
On June 26, 2017, a week after the U.S. Supreme Court unanimously held that the
“disparagement clause” in Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), violates the
Free Speech Clause of the First Amendment in Matal v. Tam, the U.S. Patent and Trademark
Office (the “USPTO”) has updated (Examination Guide 1-17) its previous
guidance, Examination Guide 01-16, to explain how it will examine applications following the
Supreme Court’s decision in Tam.
Matal v. Tam
Simon Tam is the lead singer of the rock group “The Slants.” In 2011, Mr. Tam sought to obtain
a trademark for his band’s name. The USPTO refused the application under 15 U.S.C.
§ 1052(a), claiming that the mark “consists of or includes matter which may disparage or bring
into contempt or disrepute persons, institutions, beliefs or national symbols.” Apparently,
“SLANTS” is a racial slur for Asians. Mr. Tam deliberately chose the name to reclaim the term
and, hopefully, make it less forceful as an insult. Mr. Tam argued that the term had other, more
likely meanings, but the USPTO disagreed, and the Trademark Trial and Appeal Board
(“TTAB”) affirmed the rejection.
Tam appealed to the U.S. Court of Appeals for the Federal Circuit. There, Mr. Tam argued that
the law prohibiting the registration of disparaging trademarks violated his First Amendment
rights. A panel of three judges affirmed the PTO’s rejection of his application, but noted that it
was time for the court to revisit whether § 1052(a) violated the First Amendment.
The Supreme Court ruled that the ban on disparaging marks was an unconstitutional violation of
the First Amendment. This ruling by the Supreme Court of the United States will have a big
impact on the filing of future trademarks. This now means that scandalous and offensive marks
can now be filed and received protection from the USPTO. Does this now mean that potential
marks containing the words, “Tar-baby”, “Wetback”, or even “Nigger” will be acceptable?
Based on the language used by the Supreme Court this is quite possible.
Future Effects of Changes
The case brings other disparaging decisions under US trade mark law back into public attention.
Blackhorse v Pro Football, Inc. is currently pending appeal after the USPTO cancelled six
trademarks using the term Redskins associated with a Washington state football team. The marks
were blocked because of the disparagement clause and Pro Football, Inc. appealed. Given the
Tam decision, it’s now unlikely the USPTO decision will stand in the way of registration of the
trade marks for the team. It is arguably too early to say whether the case will open the floodgates
for disparaging and offensive marks. Free speech cases by their very nature protect the right to
say something that others believe should not be heard. However, some may say that possible
trademark applicants would not want to alienate possible consumers of their product or service,
but I guess that is something that we will have to wait and see.