Disparagement Clause Held Unconstitutional, Will Scandalous and Immoral Provision Fall Next?
By: Christopher R. Butler and Amanda H. Wilcox
In a victory for free speech advocates and the anti-censorship movement throughout the United States, The Slants, an Asian-American rock band, has reclaimed a term classified by some to be racially insensitive. While the Supreme Court’s decision in Matal v. Tam focused upon the disparagement clause of Section 2(a) of the Lanham Act, the Tam decision will likely force the United States Patent and Trademark Office (USPTO) to examine other types of trademark applications from a different perspective. Now that the disparagement clause of Section 2(a) has been held unconstitutional, the future of the prohibitions against registering scandalous and immoral trademarks also in Section 2(a) must be questioned.
Although not explicitly discussed in the Tam decision, it is possible that the USPTO may allow trademarks that would have been denied previously so that the USPTO is not perceived to be restricting free speech in a subjective manner. Free-speech advocates applaud the Tam decision since the scandalous and immoral provision of Section 2(a) has been somewhat inconsistently applied throughout the years. While many trademarks have been denied registration under this provision, a number of trademarks with language that can be described as colorful or salty at best have also been allowed. After Tam, a more consistent and predictable application of this provision may be on the horizon. If this is the case, applicants will likely enjoy a more relaxed standard when attempting to register marks that would have been refused registration under the scandalous and immoral provision of Section 2(a) before the Tam decision.
In view of the Supreme Court’s Tam decision, it is possible that the scandalous and immoral provision of Section 2(a) may also be found to violate the Free Speech Clause of the First Amendment. Although the disparagement clause and scandalous and immoral provision may be distinguished in the sense that the United States government may have a greater interest in refusing the registration of marks deemed to be offensive due to their vulgar, obscene, or sexually explicit nature rather than deemed to be offensive by some members of a particular group, the relationship between these portions of Section 2(a) cannot be ignored. Nevertheless, the Supreme Court’s ruling in Tam will almost certainly result in greater flexibility for applicants to pursue a larger variety of “creative” marks to use as source identifiers for their products and services.
In this way, a larger variety of marks could be registered with the USPTO. Not only will marks identified as disparaging presumably proceed to registration after the Tam decision, such as the previously cancelled REDSKINS registration, but those classified as scandalous and immoral may also have increased potential to result in registration. While the future of the scandalous and immoral provision of Section 2(a) is questionable, it remains to be seen whether the determinations set forth in the Tam decision will extend to additional types of marks.
 On June 19, 2017, the Supreme Court of the United States issued a decision in which it affirmed the Federal Circuit’s holding that the disparagement clause of Section 2(a) is unconstitutional under the Free Speech Clause of the First Amendment. Matal v. Tam, No. 15-1293 (June 19, 2017). The disparagement clause does not permit the registration of a mark if it may be deemed to be offensive to a “substantial percentage of the members of any group.” Id. However, in the Tam decision, the Supreme Court found that the disparagement clause is a classic example of viewpoint discrimination and that the “public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.” Id. (quoting Street v. New York, 394 U.S. 576, 592 (1969)).
 Under this test, a mark may not be registered if it is “shocking . . .; disgraceful; offensive; disreputable; . . . giving offense to the conscience . . .; [or] calling out [for] condemnation.” In re Mavety Media Group, Ltd., 33 F.3d 1367, 1371 (Fed Cir. 1994)).
 Lindsay Gibbs, Washington Cites Long List of Other Offensive Trademarks to Defend Its Offensive Trademark, Think Progress (Nov. 3, 2015), https://thinkprogress.org/washington-cites-long-list-of-other-offensive-trademarks-to-defends-its-offensive-trademark-86fffc109ea7.
 See, for example, In re Luxuria, s.r.o., 100 U.S.P.Q.2d 1146 (T.T.A.B. 2011) and In re Nicholas Jones, Serial No. 85,855,449 (T.T.A.B. 2013).