Scandalous marks: Just what the %$*£@ is registrable?
The US trademark law (Lanham Act) disallows registration of a mark (1) that contains immoral, deceptive, or scandalous matter; or (2) which may disparage persons, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.
The statute addresses registration only and does not speak to common law trademark rights, which are acquired through commercial use of a mark in the US. The First Amendment to the US Constitution prevents the government from making laws which abridge the freedom of speech.
The US Supreme Court addressed the disparagement prong of the Lanham Act in Matal v Tam, 137 S. Ct. 1744 (2017). In that case, Simon Tam applied to register the mark ‘The Slants’ for “entertainment in the nature of live performances by a musical band.” The USPTO interpreted the mark as disparaging persons of Asian descent, despite the fact that Tam is Asian American, and refused registration.
The case was appealed to the Court of Appeals for the Federal Circuit, which held that the disparagement provision of the Lanham Act is unconstitutional because it violates the First Amendment on freedom of speech. The USPTO appealed to the US Supreme Court, which exercised its discretion and agreed to hear the case.
