Here’s an update to my comment on In re Tam published a couple of weeks ago.
In a letter to a clerk for the Court of Appeals for the Federal Circuit in the pending Trademark Office appellate case In re Brunetti (CAFC No. 2015-1109), the U.S. Department of Justice concedes that the CAFC’s recent decision in In re Tam forecloses enforcement of not only the “disparagement” provision of Lanham Act Section 2(a) but of 2(a) in its entirety, including the controversial also the “immoral or scandalous ” language as well. The letter, signed by Assistant Attorney General Joshua Salzman, an attorney advising the Director of the U.S. Patent and Trademark Office, was in response to the Brunetti panel’s order that the government offer an opinion on the impact of In re Tam on interpretation and application of Section 2(a) in its entirety.
The letter says in part:
“[A]lthough a court could draw constitutionally significant distinctions between these two parts of Section 2(a), we do not believe … that there is any longer a reasonable basis in this [CAFC] Court’s law for treating them differently. … [T]he reasoning of Tam requires the invalidation of Section 2(a)’s prohibition against registering scandalous and immoral marks as well.”
The letter goes on to say that, “the United States believes that Tam was wrongly decided, and is considering whether to seek review of that decision in the Supreme Court.” But for the time being, it appears that Tam precludes the U.S. Trademark Office from refusing registration to any mark that falls under the interdicts of 2(a), and is all the more likely to cause a reversal of the recent cancellation of the Washington Redskins’ trademark registrations, as well as recent refusals of registration to marks deemed “scandalous or immoral.”