Written By Chitakone Arounlangsy
The Federal Circuit, on March 15, 2016, ordered the USPTO to respond to a petition which asserted that the USPTO was ignoring the Federal Circuit’s ruling in December 2015 involving disparaging or scandalous marks. In In re Tam, an Asian-American rock band’s application for the trademark “The Slants” was denied under 15 U.S.C. § 1056 of Section 2(a) of the 1946 Lanham Act. In re Tam, 808 F.3d 1321 (Fed. Cir. 2015). The TTAB found that the proposed mark was disparaging to the Asian-American community. Id. 15 U.S.C. § 1052, involves marks that consist of or comprise of immoral or scandalous matter, or matter which may disparage persons, institutions, beliefs, or national symbols, or bring them into contempt or disrepute. 15 U.S.C. § 1052 (1946). In 2014, the trademark for the Washington Redskins was canceled by the TTAB, for being disparaging to the Native American community. Pro-Football, Inc. v. Blackhorse, 62 F. Supp. 3d 498 (E.D. Va. 2014). In In re Brunetti, applicant Erik Brunetti’s trademark application was denied by TTAB because the mark FUCT comprises of immoral or scandalous matter. In re Brunetti, 2014 WL 4426133 (Trademark Tr. & App. Bd. 2016). Brunetti appealed and the case moved to the Supreme Court for review. Id.
While the constitutionality of the provisions under Section 2(a) are being reviewed, the PTO will be issuing advisory refusals for trademarks that consists or comprises of scandalous, disparaging, or immoral matter. The PTO still uses TMEP § 1203 for refusal on the basis of immoral or scandalous matter; deceptive matter; matter which may disparage, falsely suggest a connection, or bring into contempt or disrepute.
The PTO will be following certain guidelines pending final review of the Supreme Court. Any suspension based on the scandalous provision under Section 2(a), will remain suspended until the Federal Circuit court makes a final decision in In re Brunetti. After which, the PTO will then reevaluate the need for further suspension. For suspensions based on the disparaging provision, the application will remain suspended until one of the following occurs: (1) the period to petition for a writ of certiorari (including any extensions) in In re Tam expires without a petition being filed (2) a petition for certiorari is denied; or (3) certiorari is granted and the U.S. Supreme Court issues a decision. The outcomes in In re Tam and In re Brunetti, will determine what the new standard the PTO will use for disparaging and scandalous trademarks.