What’s in a name? The USPTO’s slanted viewpoint on trademark applications

For over 3 years now, Asian-American rock band, The Slants, has been making noise in the courts while fighting for the right to register the band’s trademark with the United States Patent and Trademark Office (USPTO). The band’s battle started in 2013 when the USPTO determined that the “The Slants” was disparaging to Asian Americans and refused registration of the mark.

For the past 70 years, the USPTO has used Section 2(a) of the Lanham Act to deny registration of marks that it deems to be immoral, scandalous, or disparaging. Perhaps most notably, the USPTO relied on section 2(a) when it canceled the Washington Redskins’ trademark after over 40 years of registration.  Fortunately for the Redskins, and any other company or individual looking to protect a name or image that isn’t exactly “G” rated, the law may be changing thanks to the not so straight-laced musical group.

The band hit a major high note in December 2015 when a Federal Circuit Court of Appeals held that the Lanham Act’s exclusion of “disparaging” trademarks from registration amounted to “viewpoint discrimination” and was a violation of the First Amendment.  However, the USPTO appealed the ruling to the Supreme Court; oral arguments for which were just heard in January 2017.

Justices Breyer, Kagan, Kennedy and Ginsburg voiced concerns regarding possible constitutional problems with the USPTO’s review process, authority to determine whether a mark is disparaging or scandalous, and its inconsistent application of those determinations.  However, the Justices also made it clear that imposing absolutely no limits on trademark registrations could also be problematic.

It is uncertain how the USPTO would be able to impose registration limits without having some degree of discretion as to what is or is not appropriate material for a trademark, or what guidance the Supreme Court will provide should it find Section 2(a) to be unconstitutional.  Until the law becomes more settled, it is best to consult an experienced trademark attorney prior to applying for a mark that may be considered disparaging or scandalous.

A ruling is expected in June.  Stay tuned to this space for updates.

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