Trademarks – Joseph William Singer

Trademark Act provision disallowing registration of marks that are immoral or scandalous violates the first amendment

June 24, 2019 / Free Speech, Trademarks

The Supreme Court has held, inIancu v. Brunetti, — U.S. — (2019), that the Constitution prohibits statutory distinctions between commercial speech based on its “viewpoint.” The provision of the Trademark Act taht prohibits federal registration of marks that are “immoral or scandalous,” 15 U.S.C. §1052(a) is thus unconstitutional. While several Justices would have interpreted the provision narrowly to outlaw speech based on its manner rather than its substance (for example, outlawing obscene, profane, or vulgar) and then upheld the constitutionality of the provision. The majority left it to Congress to try to adopt a narrower provision that would not distinguish between speech based on whether it is consistent with conventoinal morality. The end result is to allow Erik Brunetti to obtain trademark registration for his F-U-C-T line of clothing.

First Amendment protects right to federal registration of offensive trademarks that disparage a person or group

June 27, 2017 / Antidiscrimination Law, Consumer Protection, Fair Housing Act, Free Speech, Intellectual Property, Religious Freedom, Sexual Orientation, Trademarks

The Supreme Court held that the First Amendment prohibits enforcement of a provision of the Lanham Act that purports to deny the benefits of trademark registration to names or marks that “disparage” a person or “bring [them] into contempt or disrepute.” Matal v. Tam,2017 WL 2621315 (U.S. 2017); 15 U.S.C. §1502(a) (Lanham Act). The Court held that “this provision violates the Free Speech Clause of the First Amendment. It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” The case involved a band called “The Slants” who sought to reclaim an offensive term for persons of Asian descent. Because the Court’s analysis focused on the idea that speech cannot be regulated because of its offensive content, it would appear that this ruling would equally apply to those who use a term about themselves (the members of the Slants are Asian-Americans) …

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Federal Circuit holds that first amendment protects right to use disparaging trademarks

July 2, 2016 / Free Speech, Intellectual Property, Trademarks

In In re Tam, 808 F.3d 1321 (Fed. Cir. 2015), the Federal Circuit held the government could not withhold trademark registration because the name was disparaging. In re Tam involved a band called The Slants and the Patent and Trademark Office had determined that the name represented a racial slur that was disparaging to people of Asian descent and thus could not be registered as a trademark under the Lanham Act, and its ruling was upheld by the federal District Court. Band leader Simon Shiao Tam had argued that he was trying to reclaim the word just as the previously derogatory word “queer” had been reclaimed by LGBTQ persons. The Federal Circuit reversed the trial court’s ruling, finding Tam’s expressive speech to be protected by the first amendment even if the name was disparaging and its use a violation of the Lanham Act. The court did not address the question of how to deal …

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Federal District Court orders cancellation of R-skins trademark registration

July 8, 2015 / Intellectual Property, Trademarks

A federal court has ordered cancellation of the R-skins trademark registration on the grounds that it “may disparage a substantial composite of Native Americans and bring them into contempt or disrepute” in violation of §2(a) of the Lanham Act, 15 U.S.C. §1052(1), at the time of their registrations. Pro-Football, Inc. v. Blackhorse (E.D. Va. 2015).