Obscene No More: Fed Circuit Clears Disparaging Trademarks

The Federal Circuit Court of Appeals has paved the way for the registration of trademarks that previously would have been rejected as disparaging or scandalous.

On December 22, 2015, the Federal Circuit took up the case of an Asian band who called themselves “the Slants” and wanted to register their band name.  The trademark application was blocked through the Trademark Office until this 110 page decision, which addressed the hefty issue of whether the prohibition on offensive trademarks violated the 1st Amendment of the Constitution.  The short answer: Yes.  The bar to registering disparaging trademarks violated the 1st Amendment.  You apparently have a right to register your offensive trademark in America.  The opinion can be found here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/14-1203.Opinion.12-18-2015.1.PDF

Section 2(a) of the Trademark Act (15 U.S.C. §1052(a)) and the Trademark Manual of Examining Procedure (TMEP 1203) have historically prohibited the registration of trademarks that consist of matter that may disparage, or bring into contempt or disrepute, persons, institutions, beliefs or national symbols. Also, the TMEP had set forth specific standards for “disparagement” rejections in TMEP 1203.03(b)(i-ii).  http://tmep.uspto.gov/RDMS/detail/manual/TMEP/current/d1e2.xml#/manual/TMEP/current/TMEP-1200d1e1.xml   In a nutshell, the standard has been in the hands of a Trademark Examining attorney who must make a showing in rejecting an application that a substantial composite, although not necessarily a majority, of the referenced group would find the proposed mark, as used with the relevant goods or services, to be disparaging in the context of contemporary attitudes.

The Supreme Court may well visit this opinion and so we’ll eventually see what happens to those REDSKINS.

Article written by John Buche, J.D., www.buchelaw.com.  Direct any inquiries about registering offensive trademarks to jbuche@buchelaw.com

Copyright 2015.  Buche & Associates, P.C.