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POTTY MOUTH! The New Law of Trademarks!

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Matal v. Tam

As I kid I knew one of the quickest ways to get into trouble was to have “a potty mouth.”  A Potty Mouth?  What was that – swear words, words that referred to something out of the social norm, or body parts?   My parents’ definition of “Potty Mouth” changed all the time.  The punishment did not – soap, a swat, or a time out….

The General Rule for the US Patent and Trademark Office (USPTO) has been to deny a trademark registration that the USPTO deems disparaging.   The guidelines of what is considered disparaging that the USPTO followed are found in the Lanham Act – 15 USC 1052(a).

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or 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; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States. 15 (U.S.C 1052(a)) (emphasis added)

Well, that sounds a lot like the ever morphing “Potty Mouth” Rule set forth by Bob & Chris – my parents!  The beliefs and thoughts of one person usually differ from that of another.  So the question is…What Trademark Rises to the Level of Disparagement to Warrant the USPTO to Refuse Registration on the Principal Register?


(c) 2016, THE SLANTS

A Rock Group comprised of all Asian-Americans chose to call their band “The Slants” – while the term is sometimes used in a derogatory manner toward Asians, the Band wanted to take any stigma out of the use of the name.  The Band decided to register its name with the USPTO to be able to protect its name (aka brand) (aka trademark) from those who would capitalize on the brand and create infringing products.

The USPTO said “NO!”  The Band Name and Trademark of the Band disparages others and therefore cannot be registered.  The Band appealed and in January 2017 the Supreme Court of the US held oral arguments on whether or not the USPTO should register “The Slants.”  The Opinion of the Supreme Court for the Case issued June 19, 2017 – Matal v. Tam – US 15-1293, overturns the USPTO’s ruling that “The Slants” trademark disparages a person or a group.  The Supreme Court held  that free speech plays a roll in trademarks and that the use of marks can create an expression.  An expression that is protected under the First Amendment.  The fact that the commercial speech is usually held to a higher standard than personal speech did not give the USPTO the right to deny The Slants their opportunity to express their views.

Ok, so what does this mean to you?  Could it be that the Supreme Court of the United States just defined what a “Potty Mouth” is once and for all?  Well….I would not go that far.  Matal v. Tam demonstrates to those trademark owners that may want to “push the edge” or “make a statement” and be able to create a brand around the trademark that there is hope!  The key is going to be clear reasoning behind the proposed trademark and where the proposed trademark fits within the First Amendment and Freedom of Expression.

This is also good news for those who want to keep The Washington Redskins trademark alive!  The Supreme Court only chose to hear Matal v. Tam, but the new criteria and holding that certain portions of the Lanham Act are unconstitutional give the NFL Redskins hope that registration may finally occur.  Matal v. Tam also means that the flood gates just may open up with marks that have been denied in the past getting a new look and lease on registration.

With a new ruling, comes new hope and conjecture.  Somehow, I don’t think Bob or Chris would accept the Ruling of the Supreme Court.  However, the USPTO and the rest of world certainly will! I would have enjoyed trying to use the “First Amendment” argument when I let a swear word out at my twin sister.  However, the Courts and the USPTO have a whole new set of criteria when it comes to “disparagement.”  A new hope for all of those trademark owners wanting their brand to express not only what their business is but who they are!  So now there is a new term – A First Amendment Trademark –  A trademark that indicates the source of goods and the possibly the belief(s) of the owner of the trademark!