Life after Tam: the impact on dilution


Roberta Jacobs-Meadway

Life after Tam: the impact on dilution

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The US Supreme Court’s ruling in Matal v Tam may have consequences for trademarks of a scandalous nature, and there may also be implications for the area of tarnishment, says Roberta Jacobs-Meadway of Eckert Seamans.

In Matal v Tam in June 2017, the US Supreme Court famously found unconstitutional on First Amendment grounds the prohibition against registration of trademarks deemed to be disparaging under section 2(a) of the Lanham Act.

The decision did not expressly address the portion of section 2(a) precluding registration of marks deemed scandalous or immoral, which the US Court of Appeals for the Federal Circuit had interpreted to be a prohibition on registration of marks identified in a dictionary as “vulgar”, whether or not any substantial group of people would consider the term “scandalous”.

The logic of the decision of the court, the finding that “viewpoint discrimination” is not allowed, coupled with Justice Alito’s statement that the disparagement clause was a “happy-talk” clause rather than an anti-discrimination clause, has led many observers to conclude that the prohibition on scandalous and immoral marks will fall next. Marks that are disparaging could be deemed immoral or scandalous. “Immoral” and “scandalous” are terms that depend on viewpoint, as well as context.

Roberta Jacobs-Meadway, Eckert Seamans, trademarks, trademark infringement, Supreme Court, scandalous, Brunetti, USPTO, trademark, Disparagement,