Last year the United States Supreme Court unanimously affirmed the Court of Appeals for the Federal Circuit in the case Matal v. Tam which stated that the provisions of the Lanham Act‘s prohibiting the registration of trademarks that may “disparage” persons, institutions, beliefs, or national symbols with the United States Patent and Trademark Office violated the First Amendment. Matal V. Tam, involved a musical group called The Slants. Tam the founder of The Slants named his band to reclaim and take ownership of Asian stereotypes. Tam filed an application with the USPTO to register THE SLANTS, which was rejected. Tam appealed a few times but the application was eventually abandoned. Tam then filed a second application seeking to register THE SLANTS for “Entertainment in the nature of live performances by a musical band,” based on his use of the mark since 2006.
The Lanham Act, statute 15 U.S.C. § 1052(a) prohibits the registration of a trademark “[comprising] immoral, deceptive, or scandalous matter; or matter which may disparage… persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.” The USPTO examiner refused Tam’s mark stating that the mark was likely disparaging to “persons of Asian descent” explaining that the term “slant” had a “long history of being used to deride and mock a physical feature” of Asian people. After the refusal, the members of the band challenge the constitutional validity of the refusal based upon the Free Speech Clause of the First Amendment. The US Supreme Court held that the disparagement clause of the Lanham Act violated the Free Speech Clause of the First Amendment. Another landmark case was In re Brunetti where the US Court of Appeals for the Federal Circuit held that the trademarks “are private, not government, speech.”
So what does all this mean for trademarks and being able to file disparaging, scandalous and immoral marks? Matal v. Tam sets clear precedent that you as a trademark application can depend on to preserve your mark, and you do not have to worry about the federal government restricting your rights to file a disparaging, scandalous and immoral marks. As time goes on we will probably see more marks that push the envelop and companies building its brands around potentially rude or crude marks.