Trademarks as a Reflection on Our Civil Rights: Is it Legal for the USPTO to Deny Registration of Trademarks Because it Deems the Marks “Scandalous”?
IS IT LEGAL FOR THE USPTO TO DENY REGISTRATION OF TRADEMARKS BECAUSE IT DEEMS THE MARKS “SCANDALOUS”? This question has been troubling many attorneys and trademark owners for some years now, but it should concern the public in general. It is important to keep in mind that even though the United States Patent and Trademark Office (“USPTO”) appears to only be concerned with the technical intellectual property (“IP”) law and isolated from political discussions, the USPTO is an administrative agency. For that matter, when it acts it does so as part of the Federal Government. Therefore, when the USPTO decides a mark should not be registered based on the “scandalous provision” of the Lanham Act or Federal Trademark Act, the Federal Government is vetting speech based on its content and such action falls within the realm of the First Amendment.
Even though this topic has been discussed for years by academics and practicing IP lawyers, the issue became part of a wider discussion when the Supreme Court affirmed a judgment of the Federal Circuit Court on a recent trademark case. In that case the USPTO denied registration of the trademark “THE SLANTS” arguing that the Lanham Act prohibited the registration of trademarks that may “disparage” any person living or dead. 15 U.S.C. §1052(a). Applicant, band vocal leader Shia Tam, appealed in federal court. Matal v. Tam, 137 S.Ct. 1744 (2017). The court held that the disparagement clause, used by the USPTO to deny Tam registration of his trademark ‘THE SLANTS”, was facially unconstitutional under the First Amendment’s Free Speech Clause and the Supreme Court affirmed the judgment. Id.
A month after Tam’s victory, Erick Brunetti appealed a decision on a nearly identical issue. Mr. Brunetti is an artist that created a brand called ‘FUCT” which he uses to commercialize his products and share his social commentary and political views. See Autre Interview with Erik Brunetti. When Brunetti applied for federal registration of his mark “FUCT”, the USPTO refused it arguing that the mark was “vulgar” under Section 2(a) of the Lanham Act. In re Brunetti, 877 F.3d 1330 (Fed. Cir. 2017). Brunetti brought his case to Federal Court asserting that the “scandalous” prohibition in Section 2(a) is an unconstitutional infringement on free speech. Id. The Court of Appeals reversed the Board’s decision but denied re-hearing. Id.
Even though the rulings in Tam and Brunetti are clear in the impropriety of the USPTO’s refusals of trademark registration based on speech content, this year on May 24, 2018, the USPTO issued a guidance for compliance with the scandalous provision of Section 2(a) of the Lanham Act 15 U.S.C. § 1052(a). See https://www.uspto.gov/sites/default/files/documents/Exam%20Guide%2002-18.docx. The USPTO instructed its trademark examining attorneys to continue to: (1.) Examine applications for compliance with the scandalous provision and (2.) Suspend action on any applications subject to refusal under the scandalous provision. Furthermore, the guidance provides that any suspensions based on the scandalous provision will remain in effect until either: The deadline for a petition of certiorari in In re Brunetti expires with no petition filed (which expires on September 7, 2018), or, if a petition for certiorari is filed, the Supreme Court: denies certiorari; or concludes their proceedings in the case.
In Tam the Supreme Court was clear in declaring that “trademarks are private speech” and held that the “Court exercises great caution in extending its government-speech precedents, for if private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints.” Hence, the fact that the USPTO is set in its policy until the Supreme Court resolves issues individually is surprising considering that the USPTO is an institution founded for the progress of sciences and arts. We will have to wait to see whether the Supreme Court will entertain this issue and how the USPTO will guide its examiners in the future. We will keep you posted on any developments in this interesting topic!