Mark Disparagement No longer a Hurdle to Overcome in Trademark Registration

By: Kandyce Hall 

The Supreme Court’s recent decision in Matal v. Tam, in which the Court found denying trademark registration of disparaging marks unconstitutional, has left many to wonder if the decision has opened the floodgates to allow all offense marks to receive federal registration. In Tam the Court found the government violated the applicant’s freedom of speech when his application was denied based on mark disparagement under section 2(a) of the Lanham Act. However while the Court spoke directly to the issue of disparaging marks it was silent on the issue of other offensive marks that have traditionally been denied registration as well under the Lanham Act. For instance, under section 2(a) of the Lanham Act trademark registration may be denied if the mark is found to be immoral or scandalous, but, neither issue was addressed directly in the Court’s opinion. While trademark registration can no longer be denied solely based on claims of disparagement there are still a host of other registrability issues a mark may fall under that could prevent its registration such as 2(d) likelihood or confusion and 2(e)(1) descriptiveness.

The Court’s decision was a victory for Mr. Tam and his band as well as for fellow applicants whose trademark registration had been denied or cancelled based on mark disparagement. The Redskins, a NFL team’s trademark registration, had previously been cancelled after an opposer brought claims of mark disparagement. The fate of the Redskin’s mark is looking brighter with the outcome of the Tam decision. But, only time will tell whether marks that fall under the category of immoral or scandalous share the same fate as Tam.



Link: Matal v. Tam https://www.supremecourt.gov/opinions/16pdf/15-1293_1o13.pdf