Welcome to 2016. While I’m excited for another year that will undoubtedly bring more examples of unintellectual property (UnIP), I wanted to touch on perhaps the largest trademark ruling that occurred at the end of 2015. The United States Court of Appeals for the Federal Circuit held that the United States Patent and Trademark Office (USPTO) can not reject trademarks for being offensive. The case stems from an Asian-American rock band’s attempt to register its band name, The Slants. The USPTO refused to to do so and the the Trademark Trial and Appeals Board (TTAB) had sustained the refusal.
When appealed, the Court was tasked with answering one question: Does the bar on registration of disparaging marks in 15 U.S.C. §1052(a) (set forth below) violate the First Amendment? The answer was a resounding and, in this lawyer’s personal opinion, a long overdue YES!
The USPTO’s basis for refusing marks like THE SLANTS, NO $#!+, THE COMPLETE A**HOLE’S GUIDE TO …, F**K PROJECT, AWSHIT WORKS appears to be gone. Will former applicants who were refused registration re-apply? I would advise that they do. As predicted by ArsTechnica, the question now becomes how much of an impact this ruling has on other trademarks in the future (e.g. Redskins). I am glad that I no longer will have to spend so much time trying to advise my clients about what may or may not be immoral or scandalous as they identify potential trademarks, as I clearly had a different interpretation of those terms than the USPTO and its various precedent.
I mean, come on, how can you accurately reconcile some of the USPTO’s refusals and TTAB’s allowances with decisions like the relatively recent one involving NUT SACK DOUBLE BROWN ALE. I know, I know, it all boils down the facts, but would you change your mind knowing that the slogan for that beer was “Give Our Nut Sack a Taste” with a picture that looks like a squirrel holding a bag of nuts (or testicles). The good news is that, so long as the law does not change again, these judgment decisions with regard to offensiveness and immorality should no longer determine the registrability of a mark. Start your dirty mind engines!!!
15 U.S.C. §1052 (Extract)
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it–
- (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 2(9) of the Uruguay Round Agreements Act) enters into force with respect to the United States.