On June 19, 2017, SCOTUS decided Matal v. Tam, which could open the floodgates for registration of previously-rejected, sexually-explicit trademarks. The Tam case dealt with the attempt to register THE SLANTS as a trademark with the USPTO. The USPTO rejected the application, so Tam sued on behalf of his Asian band, which had co-opted and embraced the derogatory term. The case worked its way up to the U.S. Supreme Court, which decisively ruled that the First Amendment will not give way to political correctness. Accordingly, the USPTO must register THE SLANTS.
Many in the adult entertainment industry have been awaiting this decision, which could finally force the USPTO to begin accepting registrations for sexually-charged brand names including explicit or profane words. For decades, any effort to seek a trademark registration containing an immoral or offensive term would be routinely rejected by the USPTO under Section 2(a) of the Lanham Act, which prohibits such registrations. That means, any brand names that include words like “Fuck” or “Cock” or “Pussy” would be routinely denied – particularly when the association with adult products or services was obvious.
For years, the adult entertainment industry accepted this fate, and used mainstream, non-offensive brand names for its products and services when it wanted to obtain trademark protection. However, as the Tam case worked its way up the courts, far-sighted industry executives started to realize that the long-standing prohibition on immoral and scandalous trademarks may be on the verge of collapse. Thus, a search of the USPTO database shows dozens of applications for brand names that include the words “Fuck” and/or “Pussy.” However, most of them were submitted only within the last year or so, and almost all remain in the pending stage. The USPTO decided to put a hold on any applications that include immoral or scandalous words, until the litigation played out. Well, that litigation is finally playing out. The same reasoning that led SCOTUS to conclude that disparaging trademarks cannot be refused, should ultimately lead the USPTO, or other courts, to the same conclusion with regard to immoral/scandalous marks. All these prohibitions are bound up in the same Section 2(a) of the Lanham Act, and all constitute viewpoint-based or content-based discrimination against the applicant. After the decision in Tam, the First Amendment cannot abide such discrimination.
The question is: How long will this take? The USPTO could potentially decide any time to give up the fight, and allow immoral / scandalous applications to proceed. Given Tam, it will have to start processing “disparaging” applications in the very near future. USPTO attorneys have already acknowledged that the same arguments supporting registration of disparaging marks apply to immoral/scandalous marks. As they should. Continued defense of this censorship scheme is frivolous, and a waste of federal dollars – not to mention a violation of the First Amendment. If the USPTO does not rectify this error on its own, the case of In Re Brunetti, pending in the Federal Circuit, will hopefully be the death knell for the prohibition on immoral/scandalous marks. That case will directly address whether immoral/scandalous marks may be prohibited, however it has been sitting on hold pending the decision in Tam. Now that SCOTUS has laid down the law, the Federal Circuit is clear to render a (hopefully) similar ruling, shutting down one of the longest running censorship rackets in U.S. history.
The marketplace of ideas will not crumble if some company decides to use a “dirty word” in their trademarked brand. Consumers will either accept or reject their products or services. That is how the marketplace is designed. For years, the USPTO artificially put its thumb on the scale of morality, and decided which brands it liked, and which it did not. The day is coming where trademark owners will no longer be corralled into a homogeneous, milquetoast pit of the mundane. Instead, the gates of creativity may soon be opened, where businessmen can decide for themselves whether their brand name should be salty or sweet.
For those interested in exploring new boundaries, the USPTO is open for business. It will accept applications for sexually-explicit trademarks, but will put the applications on hold until it decides whether to give up the ghost in this fight for expressive rights. The decision not only benefits adult entertainment companies or adult website operators, but was important to the Washington Redskins NFL Football team. The USPTO sought to cancel the “Redskins” trademark since the name was allegedly disparaging to Native Americans. The team’s owner said he was “thrilled” with the Supreme Court’s decision.
The Law of Sex 