-Wes Anderson, Attorney
Owners of scandalous, immoral, or disparaging marks are on notice: now is the time to place your $275 bet with the USPTO. And soon, the Trademark Office database may be “NSFW.”
Last Thursday, the USPTO issued Examination Guide 01-16 to address the impact of recent federal court decisions on Section 2(a) of the Trademark Act. That section prohibits registration of marks that comprise immoral or scandalous matter (such as profanity), or marks that are disparaging (such as racial slurs).
As previously blogged by my colleague Tim Sitzmann here, the Federal Circuit’s decision in In re Tam struck down the disparagement portion of Section 2(a) on First Amendment grounds. This provision is also the focus of the Washington Redskins case, Pro-Football v. Blackhorse, currently pending before the Fourth Circuit Court of Appeals in Virginia. The Guide notes the immoral/scandalous portion of Section 2(a) is pending a similar constitutional review before the Federal Circuit in In re Brunetti, in which the USPTO refused registration of the mark FUCT for athletic apparel. If the Federal Circuit holds serve in Brunetti, it will strike down the prohibition of scandalous marks.
Tam is likely bound for the Supreme Court, as is Blackhorse and possibly Brunetti assuming the timing allows SCOTUS to consolidate each case. The USPTO’s petition for certiorari to the Supreme Court for Tam remains pending as I write this. If the courts follow Tam, the impact is clear: Section 2(a) would be no more.
As these battles rage, it was not clear what the USPTO was left to do with new applications for immoral/scandalous or disparaging marks. The USPTO is not an Article III court and, as such, it cannot choose simply to ignore Section 2(a) in light of the Tam decision. But it also does not follow that the USPTO should continue to refuse registration of marks under Section 2(a) unless and until a final decision is rendered.
The Examination Guide puts forth a temporary solution: all new applications subject to Section 2(a) refusals will be suspended until the dust settles:
The USPTO continues to examine applications for compliance with the scandalousness and disparagement provisions in Section 2(a) according to the existing guidance in the Trademark Manual of Examining Procedure § 1203. While the constitutionality of these provisions remains in question and subject to potential Supreme Court review, for any new applications the USPTO will issue only advisory refusals on the grounds that a mark consists of or comprises scandalous, immoral, or disparaging matter under Section 2(a). If a mark’s registrability under these provisions in Section 2(a) is the only issue, the examining attorney will identify the reasons for the advisory refusal and suspend action on the application in the first Office action.
In effect, the USPTO has presented an entirely new category of mark owners with acres of unoccupied territory. This is a profound change for owners of marks subject to Section 2(a) refusals, even those that had previous applications rejected on appeal. The USPTO now invites new applications for all manner of marks.
When and if the dust settles and the federal courts strike down Section 2(a), the spoils of trademark registration will go to the first to file. This may operate to the detriment of any parties that wait until after a Supreme Court decision before filing applications for questionable marks. Established brand owners that, until now, could not register their marks under Section 2(a) must also now ensure that a third party doesn’t file first. This could be a bustling time for oppositions based on unregistered and profane common-law marks.
How long will the suspension last? It’s hard to say, but it could be a number of years before the Supreme Court can take on and decide each of these cases (assuming SCOTUS will grant certiorari). The Guide elaborates on some of the events that may affect the suspension:
Any suspension of an application based on the scandalousness provision of Section 2(a) will remain in place until the Federal Circuit issues a decision in Brunetti, after which the USPTO will re-evaluate the need for further suspension. Any suspension of an application based on the disparagement provision of Section 2(a) will remain in place until at least the last of the following occurs: (1) the period to petition for a writ of certiorari (including any extensions) in 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.
All that’s needed now is an application and a $275 filing fee; and if SCOTUS gets involved and Section 2(a) kicks the can, savvy applicants may find themselves the very first to claim [insert profane term of your choice here].
As it happens, later this morning, President Obama will announce his choice to replace the late Justice Scalia. As if we needed more reason to follow this Supreme Court vacancy.