A couple of federal court decisions – one of them from the highest court in the land – may well be prompting some to wonder where the line is now when it comes to what can and cannot be federally registered as a trademark.
First, there was the decision last June when the U.S. Supreme Court ruled in favor of an Asian-American musician who had hit a roadblock from the U.S. Patent and Trademark Office when he sought to register the trademark of his group’s name, The Slants. Then, last month, a three-judge panel at the Federal Circuit in Washington found in favor of a clothing retailer struggling to register the trademark his brand, Fuct.
In both cases, the majorities on the courts ruled that while the names could certainly be deemed offensive by some, the action by the USPTO, taken under the aegis of the 1946 Lanham Act, offended the principle of free speech found in the First Amendment of the Constitution. The courts declared unconstitutional the provisions of the law that the government used to reject the trademarks.
It must be noted that the rulings do not throw out the act completely. The Supreme Court decision only says government cannot bar the registration on grounds that a word might be considered disparaging of an identifiable group of persons, in this case Asian Americans.
In the second case, government hoped to avoid the whole question of First Amendment violation by arguing that the process of registration amounted to “government speech” and was therefore subject to restriction. But the Federal Circuit said that accepting that argument would mean that any information subject to registration, from land, to vehicles and even marriages could become subject to some form of censorship.
Do these decisions mean, as one headline says, the floodgates for immoral and scandalous trademarks are now open? Unlikely since offensive words generally make for terrible brands. But there are exceptions, and there will be efforts to test the waters where there is commercial potential for off-color marks. Navigating those murky waters will be easier with help of skilled legal counsel.