A federal trademark registration gives the owner of the mark many benefits. Not everything can be registered, however, even if you can use the mark in the marketplace. One limitation is a ban in Section 2(a) of the Lanham Act on registering “scandalous” or “disparaging” marks. A “scandalous mark” is one that involves immoral or scandalous matters. A “disparaging mark” consists of something that may disparage persons, institutions, beliefs, or national symbols, or bring any of them into contempt or disrepute.
People have argued over what fits within those definitions, with uneven results. Who wins those arguments can decide whether the application to register fails, or whether a currently registered mark loses its registration status. Just ask the Washington Redskins what it is like to have a mark lose registration status because of Section 2(a).
A band of Asian-Americans called the “The Slants” went and upset the Section 2(a) apple cart even more. A member of the band filed an application with the US Patent & Trademark Office (“USPTO”) to register “The Slants” as a trademark. The USPTO rejected the application, citing Section 2(a), because “slant” is used as a racial slur aimed at Asians. The band member appealed, eventually getting his case before the full panel of the Federal Circuit Court of Appeals. In 2015, the Federal Circuit sided with the band member, finding that the ban on registering scandalous or disparaging marks to be unconstitutional. There is a request pending before the US Supreme Court to hear the case.
While we wait for the US Supreme Court to decide whether to take the case, and to rule if it does take the case, the USPTO instructed its trademark examiners to put on hold any application to register a mark that has scandalous or disparaging content. The owner of a mark still can apply, but the application will be put on hold. If Section 2(a) survives the recent court challenge, the owner still can argue that the mark falls outside the ban in Section 2(a). Others have made similar arguments, with some winning and others losing.
The owner of that kind of mark should have a discussion with a knowledgeable trademark attorney to decide when and whether to apply to register.
This post provides general information only. This post is not intended as legal advice or to create an attorney-client relationship. Do not rely on this post as legal advice. Laws change and your situation may be different. You should consult with a licensed attorney for legal advice specific to your circumstances.
© 2016 Matthew D. Macy