In January 2016, I wrote a blog post, called “Can you Now Register Raunchy or Offensive Trademarks? Maybe.” At the time, the U.S. Court of Appeals for the Federal Circuit had ruled in a case brought by Simon Shiao Tam that the disparagement clause of the Lanham Act was unconstitutional and the USPTO violated Mr. Tam’s First Amendment rights by denying the trademark application for his band, “The Slants.”
The Supreme Court accepted the appeal of the Tam case and unanimously agreed that the disparagement clause is unconstitutional viewpoint discrimination. To read the opinion, click here. The underlying basis for its decision was that “[i]f there is a bedrock principle underlying the First Amendment, it is that the government may not prohibit the expression of an idea simply because society finds the idea itself offensive or disagreeable.”
“[s]peech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.’” - Supreme Court of the United States
In reaching its decision, the Court did not address whether or not Tam intended the mark to be disparaging (he says he wants to “reclaim” the term which has been used in a disparaging manner against him and others of Asian descent). Rather, the Court said, “[s]peech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.’” (emphasis added)
This is an incredibly broad-reaching decision that will affect the outcome of many other disputes, most notably the cancellation of the trademarks for the Washington DC football team, the Redskins.
It should also unleash a logjam at the Trademark Office. In light of the Supreme Court’s review of the Tam case, the Commissioner of Trademarks issued an informal directive to trademark examiners, indicating that applications for marks that might be considered disparaging should be suspended, pending the Supreme Court’s decision in the Tam case. Now that the Court has ruled, those suspensions should be lifted and the applications allowed to proceed.
So, as I noted last year, 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.
I will caution, however, that while the Trademark Office cannot reject an application on the basis that the mark is offensive, that does not necessarily mean that you can get a product to market with that mark…yet. The Alcohol and Tobacco Tax and Trade Bureau (TTB), for example, still has rules against allowing offensive terms on alcoholic beverage labels. In all likelihood, a challenge to that rule based on the Tam case would be successful, but would take time. So, unless the TTB withdraws that rule in light of the Tam case (which it could), you might still not be able to put a beer into commerce with an offensive name until that rule is challenged.
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.