trademark first use in commerce

Supreme Court Rules On Disparaging Trademarks

For decades, the USPTO has denied registration to trademarks that are disparaging and offensive to specific racial or ethnic groups under the disparagement clause of the Lanham Act. The United States Supreme Court recently weighed in on the long-running debate that has surrounded the federal registerability of disparaging trademarks based on ethnic slurs. While there is little question that disparaging trademarks based on ethnic slurs are offensive, to say the least, many legal minds have argued that the law prohibiting the federal registration of disparaging trademarks infringes on freedom of speech protected by the First Amendment of the U.S. Constitution.

In the case before the Supreme Court, Matal v. Tam, an American dance rock band comprised of all Asian members sought federal trademark protection from the USPTO for the band name “The Slants,” a name which draws on the fact that all the members of the band are Asian ethnicity, despite the common knowledge that the term is known as a derogatory or disparaging term to refer to Asian people. The USPTO denied the trademark registration on the grounds that the mark was offensive and disparaging.

It was argued on the one hand that denial of registration to offensive and disparaging marks is in essence government censorship. On the other hand, it was contended that if the USPTO were to allow registration of offensive and disparaging trademarks based on ethnic slurs that the government would effectively be endorsing or condoning hate speech.

However, the Supreme Court Justices reasoned that disparaging trademarks are not the intellectual byproduct of the government, rather trademark applicant’s dream up the trademarks and simply apply for registration with the government (i.e., registered trademarks are not government speech). The Justices took the position that speech, in the form of disparaging trademarks, should not be banned on the ground that it expresses ideas that some find offensive. The Justices’ decision effectively stands for the premise that offensive trademarks are protected speech.

Reasons Why Trademark Registration Will Not be Permitted

15 U.S. Code Section 1052 of the Lanhan Act specifically defines subject matter on which a trademark registration will not be granted and other reasons why a trademark registration may be denied. These include:

  • Trademarks That Resemble Other Registered Trademarks:

    A trademark registration will not be granted for any trademark that resembles another trademark that has already been registered with the USPTO for a particular category of goods or services, i.e., the applicant mark and the registered mark are nearly identical and are both intended for use in the same category of goods or services.

  • Trademark That is Confusingly Similar to an Existing Registered Trademark:

    A trademark registration will not be granted for any trademark that is confusingly similar to an existing registered trademark for use in a particular category of goods or services.

  • Flags and Coat of Arms:

    Trademark registration is not granted by the USPTO for any trademark that comprises a flag or coat of arms. This prohibition similarly applies to any trademark containing an insignia of the United States or any state or municipality. Nor can federal trademark registration be obtained for any trademark that includes a flag or coat of arms for any foreign nation or any simulation thereof.

  • Name, Portrait, or Signature of a Living Person:

    Federal trademark registration will not be granted for a trademark comprising a name, portrait, or signature of any living individual unless that living individual has provided written consent. A federal trademark registration will not be granted for trademarks comprising the name, signature, or portrait of a deceased president so long as his widow is living, unless the widow has provided written consent.

  • Trademarks That Falsely Suggest a Connection:

    Registration is denied to trademark applications that falsely suggests a connection between the good or service that uses the mark and a living or dead person, an institution that has no true affiliation with the trademark, or unjustifiably draws on associations with beliefs or national symbols.

  • Trademarks That are Merely Descriptive or Deceptively Misdescriptive:

    Any trademark application that is merely descriptive of a good or service will be denied registration (e.g., CREAMY as a trademark for use with ice cream is merely descriptive of ice cream). Similarly, any trademark that is misleading or deceptive, will be denied registration (e.g., HEALTHFUL as a trademark for deep-fried corn dogs).

  • Marks That are Immoral, Deceptive, or Scandalous: 

Trademark registration is denied for trademarks that are shocking to the sense of truth, decency, or propriety. Marks that are offensive, disreputable, disgraceful, and immoral are also denied registration. Vulgar, or profane, i.e., scandalous, trademark applications are denied federal trademark registration, as well.

A trademark is a useful intellectual property right that protects a word, company name, brand, or logo that is closely associated in the mind of the consumer with a specific good or service available in commerce. The purpose of a trademark is to help consumers distinguish the goods of the trademark holder from the goods of another. A trademark can be federally protected by registering the trademark with the United States Patent and Trademark Office (USPTO). As a general rule, trademark registration is granted for a mark that is used in commerce with a particular category of goods or services so long as the mark is not already in use by another, and the mark is not confusingly similar to another mark that is already used in commerce. There are other reasons why a trademark might be refused federal registration by the USPTO.

Trademark registration can be important to building and protecting your brand. If your trademark tends to be in the realm of offensive or disparaging, this recent update to trademark law could have an impact on your ability to obtain federal registration of your mark from the USPTO. If you have any questions or concerns about obtaining trademark protection at either the state or federal level, you can always reach out to an experienced trademark attorney at Revision Legal. Please feel free to contact us using the form on this page or by calling us at 855-473-8474.

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