Will a Slanted View of Adult Language in Trademarks Be Reversed?

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**See the bottom of the page for an important update since this article originally published.**

The United States Supreme Court has agreed to hear an appeal of the case of In re Simon Shiao Tam. The issue to be determined is whether the powers of the U.S. Patent & Trademark Office (USPTO) to provide certain protections to trademark owners should extend to marks which are potentially disparaging or offensive.

Trademarks are names or symbols used to identify the source (brand) of goods or services. The U.S. Patent & Trademark Office (USPTO) implements a federal registration system where users of marks can apply for protection of their marks. Achieving registration at the USPTO affords many benefits including, to name just a few:

a) Provides the owner the right to exclusive nationwide use of the mark, and prevents others from being able to register confusingly similar marks

b) Grants the owner the right to sue in federal court, and under certain circumstances, receive an award of treble damages and attorney fees, making the monetary payout from an infringer potentially substantial

c) Entitles the owner to statutory damages for counterfeiting, removing the requirement to prove actual damages, which can sometimes be cumbersome and difficult for a trademark owner

d) Enables U.S. Customs and Border Protection to block goods from importation that are counterfeits or otherwise infringe the mark if the owner has the registration recorded with Customs

However, registrations, and accordingly these benefits, are denied to marks deemed by the USPTO to be disparaging, immoral, or scandalous. The federal statute, Section 2(a) of the Trademark Act, recites, in part, that a trademark may not be refused registration on account of its nature unless it includes:

1) “immoral, deceptive, or scandalous matter”, or

2) “matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…”.

Over the years, based on such law, the USPTO has prohibited registration of various trademarks. In 2014, in a high-profile case involving the marks of the Washington Redskins football team, the USPTO issued a decision to cancel six issued trademark registrations incorporating REDSKINS on the basis that the term is disparaging of Native Americans.

In the case at hand, Simon Shiao Tam, front man for his band out of Portland, filed an application in 2011 for the band’s name, “THE SLANTS”. Below is an example of use of the mark submitted with the application.

slantsThe USPTO rejected the application under the second prong above as allegedly disparaging to Asian Americans, arguing that the term “slants” has historically been used to mock a physical feature of people of Asian descent. Tam appealed to the U.S. Court of Appeals for the Federal Circuit, contending that the band name “reclaim[s]” and “take[s] ownership” of Asian stereotypes, and that they feel strongly that Asians should be proud of their heritage and not offended by stereotypes. The Court, divided in opinion, issued its decision on December 22, 2015, holding that the prohibition of disparaging trademarks violates First Amendment free speech rights. The USPTO filed a Petition for Writ of Certiorari to the U.S. Supreme Court, asking for the high court to hear the case. It was granted in September of this year. The case will be heard on January 18, 2017, according to an update a fundraising site, set up by the band.

The outcome of this case in the highest court in the land may have a huge impact on the adult industry, which has many times been in the center of the crossfire on issues, usually in the position of fighting immoral and scandalous rejections, the second prong from the law quoted above. In 2012, in the case of In re Fox, 702 F.3d 633, 638, 105 USPQ2d 1247, 1250 (Fed. Cir. 2012), a mark for rooster-shaped chocolate lollipops was denied by the Federal Circuit as scandalous. In 2014, in In re Michalko, 110 USPQ2d 1949, 1953 (TTAB 2014) the USPTO’s appellate arm, the Trademark Trial and Appeal Board, held that ASSHOLE remains vulgar and offensive under modern standards of usage, and is therefore unregisterable. In the case of Boston Red Sox Baseball Club Ltd. P’ship v. Sherman, 88 USPQ2d 1581 (TTAB 2008), it was determined that that SEX ROD (shown below) was immoral and scandalous based on the term “ROD” being vulgar, and the applicant’s admission that SEX ROD has a sexual connotation.

sexrodSome cases involving adult language though have, in fact, turned in favor of the applicant and been allowed registration. For example, in In re Mavety Media Grp. Ltd., 33 F.3d 1367, 31 USPQ2d 1923 (Fed. Cir. 1994), BLACK TAIL was found not to be scandalous as used on adult entertainment magazines. Also, in the case of In re Old Glory Condom Corp., 26 USPQ2d 1216 (TTAB 1993), the design mark, OLD GLORY CONDOM CORP, including an illustration of a condom with stars and stripes (in such a way as to suggest the American flag as shown below), was held not to be scandalous.ogccThe Federal Circuit in the recent In re Tam decision was very direct in its holding for the band, stating at page 4 of the decision:

The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks. It cannot refuse to register marks because it concludes that such marks will be disparaging to others. The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement pro-scription of § 2(a) is unconstitutional. Because the government has offered no legitimate interests justifying § 2(a), we conclude that it would also be unconstitutional under the intermediate scrutiny traditionally applied to regulation of the commercial aspects of speech.

Note though that the Federal Circuit stated in a footnote (1) of the decision:

We limit our holding in this case to the constitutionality of the § 2(a) disparagement provision. Recognizing, however, that other portions of § 2 may likewise constitute government regulation of expression based on message, such as the exclusions of immoral or scandalous marks, we leave to future panels the consideration of the § 2 provisions other than the disparagement provision at issue here. To be clear, we overrule In re McGinley, 660 F.2d 481 (C.C.P.A. 1981), and other precedent insofar as they could be argued to prevent a future panel from considering the constitutionality of other portions of § 2 in light of the present decision.

The McGinley case examined a mark including a picture of a nude man and woman kissing and embracing in a manner appearing to expose the male genitalia, in relation to a newsletter having to do with discussions of sexual topics. There, an appellate court (CCPA) affirmed the USPTO’s holding that the mark was scandalous and unregisterable. So, looking at the language in the footnote quoted above, the Federal Circuit appears to be overruling this decision in McGinley relating to scandalous marks – but leaving the review to another time or tribunal – while tailoring its own decision only to the disparagement clause. It will be interesting to see whether the U.S. Supreme Court will issue a decision solely as to disparagement issues, or will sweep in scandalous issues, as well.

In any case, there is much at stake in whether the Court’s decision in In re Tam will stand. It is well-settled that freedom of speech protects a person or company’s right to use a mark, but whether that mark may be afforded protection of the U.S. government is at issue. This protection is very valuable to those who achieve it, and for those who do not, it is a major setback. For example, the lack of a registration creates difficulty in enforcement of a mark, i.e. in stopping counterfeits and collecting damages. This means that there is little deterrence to others from using a similar and/or infringing mark.

Everyone in the Sex Tech and Porn business will be watching in January, including me. Whichever way this case turns, it will boom through the industry. Here’s to hoping that the decision will be affirmed, making the “bang” a good one – for business, of course!

UPDATE: On June 19, 2017, the U.S. Supreme Court affirmed, holding in favor of Tam.  Goodbye to the disparagement clause!

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