Offensive Trademark Applications Suspended by USPTO Until Supremes Rule on In re Tam

By Ronald Abrams
March 3, 2016

suspendedThe Commissioner of Trademarks has changed the way the PTO handles trademark applications involving potentially offensive, vulgar or disparaging marks in light of the Court of Appeals for the Federal Circuit’s sweeping decision in In re Tam.

The CAFC’s December 22, 2015 sua sponte, en banc supplemental decision in Tam threw a proverbial freedom of speech grenade onto Section 2(a) of the Lanham Act (15 U.S.C. § 1052), which bars registration of marks containing immoral, deceptive, scandalous, or disparaging matter.  The CAFC, in a 9-to-3 decision, held that the disparagement provision of Section 2(a) was unconstitutional as violating the First Amendment, finding that the government had presented no legitimate interest for burdening speech it finds offensive under either the strict scrutiny review (appropriate for government regulation of message or viewpoint) or the intermediate scrutiny standard traditionally applied to regulation of the commercial aspects of speech.

In anticipation of Supreme Court review of Tam, the Commissioner has issued an informal directive to trademark examiners that any application for a mark that is potentially violative of Section 2(a) should be “suspended” rather than refused on that basis until the Supreme Court takes up Tam and its companion cases. In addition, although the Tam decision was expressly limited to the “disparagement” provision in Section 2(a), the Commissioner’s directive apparently applies to all Section 2(a) bases for refusal (immoral, deceptive, scandalous, or disparaging). All non-Section 2(a) application issues will still be addressed prior to suspension.

Prior to Tam, applicants seeking to register potentially vulgar or disparaging matter received a Section 2(a) refusal “if the examiner ‘make[s] a prima facie showing that a substantial composite, although not necessarily a majority, of the referenced group would find the proposed mark, as used on or in connection with the relevant goods or services, to be disparaging in the context of contemporary attitudes,’ the burden then shifts to the applicant for rebuttal.” (CAFC Opinion, p. 10, citing Trademark Manual of Exam Proc. (“TMEP”) Section 1203.03(b)(i) (Jan. 2015 Ed.); also citing In re Geller, 751 F.3d 1355 (Fed. Cir. 2014). Thus, as pointed out by the Tam decision “a single examiner, who with no input from her supervisor, can reject a mark as disparaging by determining that it would be disparaging to a substantial composite of the referenced group.” (CAFC Opinion, p. 10)

In Tam, the applicant is the leader of the Asian-American band “The Slants,” so named to “re-claim” the term from its historical use as a derogatory reference to Asians. The CAFC agreed with the trademark examiner and the TTAB that the mark was disparaging, however, it determined that refusing a registration under Section 2(a) amounted to discrimination based on the message conveyed by the speech and thus presumptively invalid. The government presented no argument as to why the statute could survive strict scrutiny.

Instead, the government’s main argument in Tam was that Section 2(a) does not implicate the First Amendment because it does not prohibit any “speech”- the same line of reasoning followed in In re McGinley, 660 F.2d 481(C.C.P.A. 1981) (finding that an applicant’s First Amendment rights are not restricted by a refusal to register because the refusal does not affect his rights to use the unregistered mark.)

In Tam, the CAFC disagreed (reversing McGinley), finding that denying an applicant the significant benefits of federal registration amounted to a restriction of free speech because it impacts the applicant’s choice of expression (the mark), stating: “Federal trademark registration brings with it valuable substantive and procedural rights unavailable in the absence of registration. These benefits are denied to anyone whose trademark expresses a message that the government finds disparages any group, Mr. Tam included. The loss of these rights, standing alone, is enough for us to conclude that § 2(a) has a chilling effect on speech. Denial of federal trademark registration on the basis of the government’s disapproval of the message conveyed by certain trademarks violates the guarantees of the First Amendment.” (CAFC Opinion, p. 38)

Although it remains unclear whether the Supreme Court will even take up Tam, given the need for uniform application of Section 2(a) by the PTO and reviewing courts, Supreme Court review is both highly likely and much needed.  Section 2(a) also provides the basis for cancelling existing registrations, even decades-old registrations such as Pro Football, Inc.’s “Redskins” trademarks. Cancellation of the Redskins mark is currently before the United States Court of Appeals for the Fourth Circuit. Because the CAFC and the Fourth Circuit are sister courts, the CAFC’s decision in Tam is not binding on the Fourth Circuit’s determination of the Redskins case.

The constitutionality of Section 2(a) is also a key issue in the Redskins case. In addition to freedom of speech issues, Pro-Football, Inc. also challenges the constitutionality of Section 2(a) on due process grounds. In its opening brief to the Fourth Circuit (filed prior to the December 2015 In re Tam decision) Pro-Football argued “Section 2(a)’s focus on the mark’s message at the time of registration compounds the vagueness and independently violates due process: the Redskins were forced to defend their marks today against charges that the marks disparaged Native Americans a half-century ago, in 1967. Historical records no longer exist, and key witnesses are long dead.” (Opening Brief at p. 12). It should be noted that in cancellations proceedings involving allegedly disparaging marks, the issue is whether that term was disparaging at the time the registration was issued– and not whether the term has become disparaging since the time of registration. Consorzio del Proscuitto di Parma v. Parma Sausage Prods., Inc., 23 USPQ2d 1894, 1898-99 (TTAB 1992).

With mark applications in flux and established registrations under attack, the Supreme Court’s determination as to whether Section 2(a) is constitutional is sorely needed.

The Author

Ronald Abrams

Ronald Abrams uses his unique experience to provide the best business solutions to Brutzkus Gubner clients. Over the past two decades, he has counseled small and start-up companies on intellectual property matters, including trademark protection, and he has litigated numerous trademark and trade secret cases. Read more at his firm bio page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 11 Comments comments.

  1. Anon March 3, 2016 6:52 am

    Informal…?

    What is the rule of law today?

    Under what authority can an executive not enforce the rule of law that exists right now based on the possibility of some event?

    The executive simply has no basis to play the role of either judge or legislator in such a manner.

  2. EG March 3, 2016 7:55 am

    Anon,

    I agree with you completely: The Commissioner of Trademarks is acting ultra vires in this situation.

  3. Me March 3, 2016 12:14 pm

    Original article states: “a mark that is potentially violative of Section 2(a) should be ‘suspended’ rather than refused.” So what is actually happening is that the rejections on that basis are being suspended. Previous commenters are outraged that the office isn’t rejecting every applicable mark immediately!

  4. Dan March 3, 2016 2:14 pm

    I agree. The Federal Circuit is the TTAB’s reviewing court. It doesn’t matter what the 4th Circuit has to say on the matter — Federal Circuit law binds the Commissioner [a statutory member of the TTAB]. The Commissioner — a party in the In re Tam case — did not seek a stay of the ruling from either the Federal Circuit or the Supreme Court. The In re Tam mandate is binding law NOW.

    Moreover, in the In re Brunetti case currently before the Federal Circuit the USPTO Acting Solicitor and the DOJ admit: “Although a court could draw constitutionally significant distinctions between these two parts of Section 2(a), we do not believe, given the breadth of the Court’s Tam decision and in view of the totality of the Court’s reasoning there, that there is any longer a reasonable basis in this Court’s law for treating them differently. We therefore agree that the proper disposition of this case under the law of this Court is to vacate and remand the Board’s decision for further proceedings, as in Tam, because the reasoning of Tam requires the invalidation of Section 2(a)’s prohibition against registering scandalous and immoral marks as well.”

    http://www.dropbox.com/s/cmfm8dwn41d54w5/Brunetti%20letter.pdf?dl=0

    The Commissioner cannot lawfully “suspend” applications with Section 2(a) rejections. It must examine them without applying that section at all.

  5. Kenneth Kunkle March 3, 2016 3:43 pm

    Curious how they will handle existing applications in the pipeline. Out of curiosity I searched and found around 25 pending applications based on three of the more “vulgar” terms.

  6. Dan March 3, 2016 5:48 pm

    To “Me”: I read Anon and EG to be outraged that the Commissioner is suspending the applications rather than approving them. I think they’ve concluded, as I noted, that Section 2a’s ban on registering “immoral or scandaolous” marks is just as unconstitutional as the ban on marks that “disparage” a group of persons. I think the want registration, not rejection.

  7. Trademarx March 3, 2016 5:59 pm

    It would seem we’ll only know if there’s any unlawful (and arguably unconstitutional) “suspending” if there’s suddenly a dead stop in the progress of applications that have already been flagged as 2(a) or could be, in which case an affected applicant prepared to risk offending the PTO “community” will presumably press the issue.

    Bravo to IPW for reporting on this development, which is evidently based on reliable sources.

  8. Gene Quinn March 3, 2016 8:15 pm

    Trademarx-

    I’ve spoken with the author and the sources consulted are indeed reliable.

    I can understand that the USPTO finds themselves between a rock and a hard place on this one, particularly as they await the 4th Circuit decision in the Redskins case which may disagree. Having said that, informal decisions that are not communicated to stakeholders are extremely problematic — at least in my opinion.

    -Gene

  9. Anon March 3, 2016 8:48 pm

    Me @ 3 – you are seriously mis-reading and misunderstanding the umbrage.

    If the item should be rejected under law – reject it.
    If the item is should not be rejected under law – do not reject it.

    There is zero legal authority to do this “wait and see if the law changes.”

  10. Anon March 5, 2016 8:40 am

    My views on this case and the related cases are fairly well documented.

    But aside from any of the First Amendment (and accompanying “political correctness” and speech control in the name of “something good”), I am curious as to the author’s view of the possibly disjoint historical impact (he notes “It should be noted that in cancellations proceedings involving allegedly disparaging marks, the issue is whether that term was disparaging at the time the registration was issued– and not whether the term has become disparaging since the time of registration. Consorzio del Proscuitto di Parma v. Parma Sausage Prods., Inc., 23 USPQ2d 1894, 1898-99 (TTAB 1992).) and the issue of standing, vis a vis laches – or the impossibility thereof.

    Offering some ruminations (that have not been completed** – but seeking some initial feedback): in other words, the tie back of “disparaging” to the time of registration would seem to indicate that the “person” who claims to be disparaged would have had to have been around at that time of registration to suffer an injury that is to be remedied, as that particular remedy is formulated.

    How can a person not even born at that registration time claim to be disparaged by a meaning of a word before they were born? Is it in any way “fair” to simply ignore what the actual impact of the term is right now at the “injury” time that the person is claiming to be disparaged – the actual alleged time of the injury? For this rumination, I am thinking explicitly of the Redskins case (and how laches defeated a first effort at repeal, so the “politically correct” sought a person who did not suffer that limitation to rebring the same cause of action).

    The claim to injury is a present day claim – not a claim that the person was injured at the time of registration. As such, the claim to which the remedy of removing registration (and that remedy dependence on a different time – and necessarily a different “substantial composite of the referenced group“) lacks an actual nexus.

    I would posit that this is an example of the folly of attempting to legislate morality.

    The “logic” of attempting to use another era’s version of “morality” is problematic at best, and would necessarily open up an invitation to revisionism that could “threaten” all types of social progress. If the “morality” of yesteryear is allowed to be brought to bear on injuries “today,” why would the disconnect not be allowed for other “injuries” that would have been viewed as immoral at some time in the past?

    I would daresay that the very “standard” of morality being sought would also rule out any other progress (such as gay and lesbian rights). One cannot use “logic” in the one case, but not in another similar situation (one not currently being contested, but the thought experiment would apply) – if you want the “morality” of yesteryear, then be prepared for accepting all of what that “morality” was.

    **I do recognize that the parallels are not perfect in that the thought experiment is a reflection of “morals” that may not have actual cases to support the application of the logic of “yesteryear’s morality” concerning areas that that same “yesteryear’s morality” would itself be deemed repugnant – but I ask that you follow the logic of the thought experiment and realize that a “rule of law” would apply to that absent fact pattern in a way that most – including the very same “politically correct” – would find simply unacceptable.

  11. Anon March 5, 2016 8:54 am

    There is an additional flaw to consider as well:

    Those seeking removal offer up that additional “protections” exist that do not stop the “use” that is being challenged (the actual use of the disparaging name itself).

    The “does not prohibit any speech” also means that the “source” of the actual injury itself does not go away. The purported actual source of injury is the speech – not the accompanying trademark.

    The offer of these other avenues is self defeating, because these very same other avenues means that the person who is alleging injury can and likely will STILL suffer injury even if the aimed for remedy is achieved.

    Part of the case or controversy power of even being in court is that the court’s result will effect or remedy the injury. The defense of “your ability to be injured is not affected” (which is a logical paraphrase of “the disparaging name is not being controlled in practice”) attempts too much and thus would fail in its own success.

    Again, when looking at the Redskins case, when one takes a closer look, one can see that the substitution effect (of the plaintiff with laches problems to a new younger plaintiff without those laches problems) along with the desired outcome – which does not change or remedy the actual injury – is but a sham in pursuit of a politically correct agenda.

    And this is exactly why the First Amendment is necessarily implicated – even for commercial speech.