In Monday’s decision in the newly minted Matal v. Tam case, the Supreme Court affirmed the Federal Circuit decision that the Trademark Office’s refusal to register THE SLANTS mark on disparagement grounds was unconstitutional. Many were not surprised by this decision, foreshadowed in part by the transcript of the January oral argument where the justices leaned heavily into the government’s position. If anything surprised me here, it was that the Court unanimously affirmed the Federal Circuit in an IP case. The Court held that Section 2(a) of the Lanham Act was unconstitutional as being viewpoint discrimination by the government.
Many of the news articles that I read about the decision on Monday suggested this decision would open the floodgates to disparaging or offensive marks. But they’re already there, as many of the briefs in this matter pointed out. Some have even been found disparaging by other government agencies.
Take, for example, the RAGING BITCH mark that I discussed two years ago. The Trademark Office stamped a brilliantly gold seal of approval on a registration certificate for that mark for beer, yet the Michigan liquor commission refused to allow the label because it was deemed disparaging and offensive to women. The Sixth Circuit found the Michigan authority’s refusal unconstitutional on First Amendment grounds, perhaps a prelude to the Court’s decision here.
The holding in Tam seemingly applies not only to trademark law, but also at least to patents and alcohol labels. Section 1504.01(e) of the Manual of Patent Examining Procedure (MPEP) says that “design applications which disclose subject matter which could be deemed offensive to any race, religion, sex, ethnic group, or nationality, such as those which include caricatures or depictions, should be rejected as nonstatutory subject matter under 35 U.S.C. 171.” Section 608 of the MPEP also states that an examiner should object to any papers during the course of the examination of a patent that use language “that could be deemed offensive to any race, religion, sex, ethnic group, or nationality.” The Tax and Trade Bureau that regulates the alcohol industry from a federal level also includes language that is obscene or indecent from appearing on a label. See 27 CFR 4.39(a)(3); 27 CFR 5.42(a)(3) ; and 27 CFR 7.29(a)(3). While much has been said about the government’s position in Tam not limiting Tam’s ability to use THE SLANTS, at least this TTB labeling provision in fact does prevent an alcohol manufacturer from using the offensive language. In the wake of Tam, we are likely to see new challenges to these and other regulations that apply viewpoint discrimination by the government in a manner similar to that of Section 2(a).
Many have exclaimed “how will we stop all these offensive marks?” This problem doesn’t require a government solution. Just this April 2017, the Brewers Association recently updated their Marketing and Advertising Code to prevent the use of marks and materials that “contain sexually explicit, lewd or demeaning brand names, language, text, graphics, photos, video or other images that reasonable adult consumers would find inappropriate for consumer products offered to the public” and/or “contain derogatory or demeaning text or images.” Perhaps other industries – and even the NFL – could take a cue from this self-policing strategy.