On June 26, 2017, a week after the U.S. Supreme Court unanimously held that the “disparagement clause” in Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), violates the Free Speech Clause of the First Amendment in Matal v. Tam, the U.S. Patent and Trademark Office (the “USPTO”) has updated (Examination Guide 1-17) its previous guidance, Examination Guide 01-16, to explain how it will examine applications following the Supreme Court’s decision in Tam.

Before turning to the updated guidance, we provide a brief overview of the background of two trademark disputes:  Tam  and In re Brunetti.

At the heart of the two disputes is Section 2(a), which bars registration of marks that consist of or comprise matter that may “disparage. . . persons, living or dead, . . . or bring them into contempt, or disrepute.” This language, which was at issue in Tam, is referred to as the “disparagement provision. “But there is more to Section 2(a):  it also bars registration of marks that consist of or comprise “immoral, deceptive, or scandalous matter.” This language is referred to as the “scandalousness provision.”

These different provisions of Section 2(a) were challenged in separate actions as unconstitutional under the Free Speech Clause of the First Amendment before the U.S. Court of Appeals for the Federal Circuit. See Tam (disparagement provision) and Brunetti, No. 15-1109 (Federal Circuit) (scandalousness provision). In Brunetti, the Trademark Trial and Appeal Board (the “TTAB”) affirmed a trademark examining attorney’s refusal to register the mark “FUCT” under Section 2(a) because, according to the attorney, “the term ‘Fuct’ is the phonetic equivalent of the word ‘[F@$&#!],’ the past tense form of the verb ‘[f@$&].'” In re Brunetti, Serial No. 85310960 (T.T.A.B. Aug. 1, 2014).  The TTAB agreed with the USPTO’s view that the term “Fuct” is “vulgar, profane and scandalous slang.” Id. The applicant, the founder and owner of the clothing brand “Fuct,” appealed to the Federal Circuit. The court heard oral argument on the case a month after Tam was issued. And it appears that the court was waiting for the Supreme Court’s decision in Tam before deciding Brunetti.

We now know the ending of Tam, but the outcome of Brunetti remains unknown. On June 20, 2017, the Federal Circuit ordered the parties to submit supplemental briefing in Brunetti explaining how the constitutionality of the scandalousness provision should be resolved in light of the Supreme Court’s decision in Tam.

In its guidance, the USPTO explains that after Tam it will no longer refuse registration to or cancel a mark on the ground that the mark may “disparage . . . or bring . . . into contempt, or disrepute.” It further explains that “the portions of Trademark Manual of Examining Procedure (TMEP) §1203 that relate specifically to examination under the disparagement provision no longer apply.” According to the USPTO, any application that received an advisory refusal under the disparagement provision and was suspended under Examination Guide 01-16 “will be removed from suspension and examined for any other requirements or refusals.” Moreover, if “an application was previously abandoned after being refused registration under the disparagement provision, and is beyond the deadline for filing a petition to revive, a new application may be filed.”

But because the constitutionality of the scandalousness provision remains pending in Brunetti, the USPTO will continue to “examine applications for compliance with that provision according to the existing guidance in the TMEP and Examination Guide 01-16.” And “any suspension of an application based on the scandalousness provision of Section 2(a) will remain in place until the Federal Circuit issues a decision in Brunetti, after which the USPTO will re-evaluate the need for further suspension.”

As we predicted, the USPTO found that the Supreme Court’s ruling in Tam affects only disparaging marks. This was anticipated because the Court’s opinion addressed only the disparagement clause of Section 2(a) and avoided the statute’s “immoral” and “scandalous” components. Of course, the updated guidance is just the USPTO’s interpretation, and owners of immoral and scandalous marks will continue to file appeals challenging the constitutionality of the ban on registering such marks.

Continue to stay tuned for further Section 2(a) updates. If you have questions about Tam, Brunetti, or trademark registration generally, please let us know.

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