Can You Now Register Raunchy or Offensive Trademarks? Maybe.

The Lanham Act governs what may and may not be federally registered as a trademark and Section 2(a) of that law bars registration of any mark that contains immoral, deceptive, scandalous, or disparaging matter.  Until recently, that provision was used by the U.S. Patent and Trademark Office (USPTO) to reject applications for trademarks that included profanity or racial epithets. 

In 2011, Simon Shiao Tam, the front-man of the Asian-American rock band, “The Slants,” filed for registration of the band’s name.   Mr. Tam named the band in order to “reclaim” Asian stereotypes.  The USPTO rejected the application as likely to disparage people of Asian descent.  In April 2015, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit affirmed the USPTO’s finding that the mark was disparaging.  However, one of the members of that panel questioned the constitutionality of the entire provision.  The Federal Circuit then agreed to rehear the case en banc, meaning that the entire bench of judges of that court would hear the case together.

“It is a bedrock principle of the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys.” - U.S. Court of Appeals for the Federal Circuit

On December 22, 2015, the Federal Circuit released its en banc opinion, finding that the disparagement proscription of Section 2(a) was unconstitutional.  Its rationale was that “[i]t is a bedrock principle of the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys.”

The press, of course, immediately drew comparisons to the Redskins case with many suggesting that the Tam decision would bolster the Redskins chances of having its trademarks reinstated.  However, the decision of Judge Lee of The Eastern District of Virginia upholding the USPTO’s cancellation of the Redskins’ trademarks is currently under appeal in the U.S. Court of Appeals for the Fourth Circuit, a sister court to the Federal Circuit.  While that court should consider the Tam decision, it is under no obligation to follow its rationale.  Whether the Fourth Circuit follows the Federal Circuit or not, the Tam decision is likely headed to the U.S. Supreme Court and given its broad implications, there’s a good chance they will take it.

What does all this mean for those wishing to register “offensive” trademarks now?

For now, Tam is the law of the land and the disparagement proscription of the Lanham Act is unconstitutional.  The USPTO can expect a blue-streak of vulgar and off-color applications heading its way as companies vie for position in an intellectual property gold-rush.  But, there are two things to consider before joining the herd.
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"The USPTO can expect a blue-streak of vulgar and off-color applications heading its way as companies vie for position in an intellectual property gold-rush."

First, while it usually takes about 7-12 months to get a trademark registered, if the Supreme Court takes up the Tam case, it could take 1-2 years before the Court issues a decision.  That means someone filing an offensive trademark now may get their mark registered before the end of 2016, but if the Supreme Court overturns the Federal Circuit decision, the mark could be subject to cancellation in 2017-2018. 
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Second, getting the trademark registered does not necessarily mean you can put it on products.  For example, in the craft beer industry (a market with a penchant for “edgy” names) all bottle and can labels must receive a Certificate of Label Approval (COLA) from the Tax and Trade Bureau (TTB) before they can be put into the market.  Like the Lanham Act’s disparagement provisions, the TTB’s COLA regulations prohibit approval of labels that are “obscene or indecent.”  After the Tam decision, it is very likely that someone will file suit against the TTB, challenging the constitutionality of its indecency proscription.  But, that process could take years and if the TTB, in the meantime, sticks to its guns, beers with obscene or indecent names (in the view of the TTB) may not be able to hit the shelves notwithstanding a federally registered trademark for the name.

Anyone with a product for which they would like to register a trademark that may be considered offensive, should contact a trademark attorney as soon as possible to discuss not only the likelihood of getting the trademark approved, but whether there are any other laws or regulations that would keep the product off the market despite trademark approval.