On June 19, 2017, the U.S. Supreme Court ruled in Matal v. Tam that the disparagement provision of Section 2(a) of the Lanham Act is facially unconstitutional because it violates the Free Speech clause of the First Amendment. Matal v. Tam, No. 15-1293 (June 19, 2017). Section 2(a) of the Lanham Act prohibits the registration of trademarks that may “disparage…or bring…into contempt, or dispute” any “persons, living or dead”. 15 U.S.C. §1052(a).
In response to the Court’s decision, the U.S. Patent & Trademark Office issued a new June 2017 Trademark Examination Guide acknowledging that disparagement is no longer a valid ground on which to refuse U.S. federal trademark registration or cancel a U.S. federal trademark registration and confirming “[t]he portions of Trademark Manual of Examining Procedure (TMEP) §1203 that relate specifically to examination under the disparagement provision no longer apply”.
Any previously filed trademark application that has received an advisory refusal under the disparagement provision and was suspended pursuant to the March 2016 Examination Guide will be removed from suspension and examined for any other requirements or refusals. 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 (generally 2 months from date of notice of abandonment), a new trademark application may be filed. Examination Guide 1-17, U.S. Patent & Trademark Office, June 26, 2017.
Presently, the constitutionality of the scandalousness provision of the Lanham Act remains pending before the Federal Circuit in In re Brunetti, No. 15-1109 (Federal Circuit). Section 2(a) of the Lanham Act prohibits the registration of trademarks that consist of “scandalous matter”. 15 U.S.C. §1052(a). The U.S. Patent & Trademark Office continues to examine trademark application for compliance with the scandalousness provision. However, while the constitutionality of this provisions remains in question, the U.S. Patent & Trademark Office will issue only advisory refusals on the grounds that a mark consists of or comprises scandalous matter under Section 2(a). 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 U.S. Patent & Trademark Office will re-evaluate the need for further suspension. Examination Guide 01-16, U.S. Patent & Trademark Office, March 10, 2016; Examination Guide 1-17, U.S. Patent & Trademark Office, June 26, 2017.
Roberts, Mlotkowski, Safran, Cole & Calderon, P.C. continues to be committed to providing quality services for all facets of trademark law, and welcomes any questions you may have regarding how recent changes in U.S. trademark law may affect you, your corporation or your clients.
Jorie L. Stroup
U.S. Patent & Trademark Attorney