The First Amendment v. The Lanham Act

Tierra Jackson

Two cases have greatly impacted how disparaging marks are evaluated under the Lanham Act. The first is Matal v. Tam where an Asian band called The Slants was allowed to trademark their band name despite the term being disparaging under the Lanham Act. The Court decided that this particular part of the Lanham Act that prohibited disparaging, immoral, or scandalous marks is unconstitutional under the First Amendment because it will not pass the strict scrutiny standard. This ruling inspired the second case in In re Brunetti the term FUCT was considered as an immoral or scandalous mark, but the court ruled the mark could be registered and that the terms immoral and scandalous are too broad. These cases have impacted greatly what can and can not be registered as a mark. Most companies have not rushed to register marks that would be disparaging, immoral, or scandalous because of the fear they will lose customers that may be offended. Companies that use these marks are those who sell products of a sexual nature, companies that would like to add shock value to the experience you get with them, or people who wish to reclaim terms that were once used negatively. Some examples of this are the band The Slants in the Tam case, Dirty Dicks Crab House, and French Connection UK or FCUK. Since the case, the USPTO has not seen many marks that would have previously been deemed disparaging, immoral, or scandalous.