Tim Lince

It is a week ago today that the Supreme Court handed down its long-awaiting ruling in Matal v Tam, holding that the disparagement clause of the Lanham Act violates the US constitution. On the day of the ruling, there were at least 11 trademark applications filed that could be deemed disparaging or offensive. We reached out to the applicants of these filings to find out why they have chosen now to make their applications, and how they expect last Monday’s decision to affect their applications.

Before proceeding, it is worth noting that this article includes terms that some could find offensive. As we reported last week, the Supreme Court ruled that the disparagement clause of the Lanham Act violates the Free Speech Clause of the First Amendment. It has been celebrated as a victory for free speech, although the reaction of the legal community was mixed in terms of the decision and what it practically means.

One question that has been asked in the wake of the ruling is whether it will lead to a deluge of trademark applications that include disparaging or offensive terminology. Our research reveals that there were indeed a number of marks filed on decision day – June 19 – that include terms that might previously be assumed to be unregistrable. These included applications for the terms FUCK, FUCK YOURSELF, FUCKING AWESOME, TOTALLY F*CKING BRUTAL, FUCKABLE, NOFUX CLOTHING COMPANY LLC, GOOD SHITNIGGANIGGER PLEASE, DICKSBYMAIL and COCK SUCKER (the latter of which was deemed scandalous under Section 2(a) by the TTAB in 2012 and therefore did not proceed to registration).

Now, of course, even with the Tam decision at the Supreme Court, there’s no guarantee all – or any – of these marks will reach registration. Nonetheless, there appears to have been a spike in such applications so we reached out to each applicant, and some of the representative attorneys, to find out whether their decision to file was inspired by that day’s decision. Over half responded, and all of them confirmed that their application was directly influenced by Tam. The exact reasons for filing, however, were varied.

Larry Roberts is seeking registration for the term FUCKABLE, and told us that his partner is a clothing designer and he sees the ruling as a “natural opportunity” for those in that sector. As a lawyer himself, he also “applauds” last Monday’s decision, and recounted a battle he previously had to register a mark at the USPTO: “In light of the Supreme Court's ruling, I do not believe that the USPTO has the right to censor commercial use of speech. I once got turned down for an application because the USPTO examiner was a born-again Christian (or so she told me) and she found my client's application immoral (this was 15 years ago) – there was nothing inherently immoral, she just had the power to censor. I took it up with her superior and got the approval, but you get the point. We will see what happens.”

Meanwhile, Marlon Andrews, applicant for NIGGER PLEASE, told us. "I didn’t want this phrase to be available to be used for exploitative reasons – [and] I expect the mark to be accepted in light of the Supreme Court decision.” Given this defensive motivation, he saw speed as critical when drawing up his application. This perceived need to file quickly was reiterated by Dax Alvarez, a partner at Snell & Wilmer and the representing attorney for Fass'Em Inc’s application for FUCKING AWESOME. “I told my client on Monday that this is a good opportunity to apply now – let’s get one in and see what happens; but we should move quickly so we don't have to deal with any intervening applications filed by some person trying to capitalise on the decision,” he explained. “I warned the client that this is a very recent decision, and that the trademark office had not yet responded with a comment on the application of it. So I've tried to manage their expectation, but told them that this is the best it's ever been from a standpoint of trying to get it registered – so let's take a shot.”

Alvarez explained that the mark itself has been used commercially by Fass’Em “for many years”, primarily on skateboarding apparel, and the company is currently relying on unregistered rights and a “workaround” registered trademark of the shortened term FA. However, asked what he is advising other clients in light of the decision, he said: “If a client was intending to use a particular mark that wasn't likely to be available for registration before the [Tam] decision, and I was confident that they understood what they needed to do to meet the threshold of use of a mark in US commerce, I may say 'yeah, let's go for it'. But if it was just someone trying to cash in, I wouldn't. I had an analogy to one client where I compared it to when everyone was rushing to register potentially valuable domain name. But trademarks don't work like that – you can't just sell them to someone else.”

The only other attorney who responded, Gene Pierson of Texas-based firm Pierson Intellectual Property, has also been busy counselling clients following Monday’s decision. He is the representative attorney for the DICKSBYMAIL application, although gave general comments not specific to that filing. “Prior to the Supreme Court’s ruling, I would have advised clients that, as the law previously stood, there is little chance of trademarks with curse words, scandalous meanings, etc being allowed,” he told us. “At this point, marks with curse words have a much higher chance of being allowed; the chance is at least greater than zero.”

The other responses we got were, generally, from applicants not as experienced in the legal world, and often based their decision to file on news coverage of the ruling. For example, George Lamore is seeking registration for the term TOTALLY F*CKING BRUTAL, and admitted: “I am new to this and this is the first time I am trying to register a mark. I hope this mark has a better chance of succeeding but, like I said, I am new to this. I hope to use the mark for a series of humorous shirts (apparel) for people who engage in extreme sports and fitness.” Esteban Rodriquez, who filed for the term FUCK (also in class 25), simply said he is “excited about the opportunities for new trademarks in regards to the Slants ruling” and is “looking forward to success for my application”. Justin Mayfield, a founding member of NoFux Clothing Company (and seeking registration for that name), told us that he “fully supports the first amendment rights of US citizens under any circumstance [because] that is what this nation and this company was founded upon”.

The question of whether there will be a spike in applications for ‘offensive’ terms in the wake of Tam will only be answered in the longer term, particulrly once there is clarity on the treatment of scandalous marks. Nonetheless, our interactions with those involved in such applications confirm that trademark attorneys are currently weighing up options for clients, while non-lawyers are identifying commercial opportunities or are seeking defensive registrations for fear of exploitation from others. We should know soon how the USPTO will treat these applications, and the hundreds more like it that were suspended while the office awaited the decision (Forrest Firm attorney Ed Timberlake put together a long list of "arguably scandlous trademarks filed after In re Tam"). For now, the mainstream coverage given to Tam is generating significant interest about trademark law amongst the wider public.

Update: Since publication of this blog, the USPTO has issued examination guidance with respect to the Section 2(a)’s disparagement provision after Supreme Court's decision, as well as examination for compliance with Section 2(a)’s scandalousness provision while constitutionality remains in question. On the former, it notes that applications that received an advisory refusal under the disparagement provision and were suspended will now be examined for any other requirements or refusals (applications previously abandoned after being refused registration under the disparagement provision, and beyond the deadline for filing a petition to revive, will require a new application to be filed). Meanwhile, as the constitutionality of the scandalousness provision remains pending before the Federal Circuit in Brunetti, the office will continues to examine such applications for compliance with the provision according to the existing guidance in the TMEP and Examination Guide 01-16. Thus, suspensions of applications based on the scandalousness provision remains in place until the Federal Circuit issues a decision in Brunetti.

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