Alert! - Trademark Law has changed!

2017 Trademark Case Changes Everything!

Trademarks have always been a hot topic, but as of June 19th, 2017 there has been a lot more buzz around trademarks related to Matal v. Tam (click on the case to read the full opinion for yourself). You can read about what the band had to say about the decision HERE

What was the Matal v. Tam case about?

Is the Disparagement Clause found in the Lanham Act unconstitutional under the First Amendment?

Summary of the facts...

Simon Tam, the Defendant in the case, submitted an application to the Patent and Trademark Office in order to register his band’s name, “The Slants”. The Patent and Trademark Office later denied the application on the grounds that “The Slants” would likely be disparaging towards people of Asian descent.

The Disparagement Clause of the Lanham Act of 1946 prohibits trademarks that [consist] of or [compromise] immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons living or dead, institutions, beliefs, or national systems, or bring them into contempt, or disrepute.

Tam appealed the decision, but once again the trademark was denied at every stage by the Patent and Trademark Office.

Tam eventually took his appeal to the US Court of Appeals for Federal Circuit. The Federal Circuit court determined that the Disparagement Clause of the Lanham Act was unconstitutional as an invalid restriction of Free Speech under the 1st Amendment. 

However, the following appellate court decision, the USPTO appealed to the U.S. Supreme Court and was granted cert (a legalese way of saying that the Supreme Court agreed to hear his case). In its decision, the Supreme Court unanimously upheld the Circuit Court's Decisions that the Disparagement Clause of the Lanham act was UNCONSTITUTIONAL as an invalid restraint on speech. The opinion centered on what kind of speech a Trademark is. 

So, what happens now?

The most talked about case at the moment is the Redskins’ case. The Redskins also had a dispute with the Patent and Trademark Office regarding the disparaging element of the name “Redskins” to Native Americans. The USPTO cancelled 6 of the TM's associated with the Redskins (read more on that HERE). Under the precedent set by the Tam case, it seems likely that the Redskins could have its trademarks restored. 

Get ready Patent and Trademark Office, all of those applications you denied due to disparagement are up for grabs!