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USPTO Suspends Action on Potentially Offensive Trademark Registration Applications
Practical Law Legal Update w-001-5988 (Approx. 4 pages)
USPTO Suspends Action on Potentially Offensive Trademark Registration Applications
by Practical Law Intellectual Property & Technology
| Published on 14 Mar 2016 • USA (National/Federal) |
The US Patent and Trademark Office (USPTO) has advised examiners to suspend action on pending trademark registration applications for potentially offensive marks until active court litigation—including the In re Brunetti, In re Tam, and Pro-Football v. Blackhorse cases—is resolved.
The US Patent and Trademark Office (USPTO) has issued a guide directing examiners to continue to screen pending trademark registration applications for potential violations of Section 2(a) of the Lanham Act (15 U.S.C. §1052(a)), but to issue only advisory refusals and suspend action on applications found to violate the provision while the constitutionality of Section 2(a) is the subject of active court litigation.
The USPTO is suspending action on applications involving marks subject to refusal under the disparagement and scandalousness provisions of Section 2(a) pending the outcome of three court cases:
- In In re Tam, the US Court of Appeals for the Federal Circuit, sitting en banc, determined that the ban on registering disparaging trademarks in Section 2(a) violates the First Amendment (808 F.3d 1321 (Fed. Cir. 2015)). The decision is subject to potential Supreme Court review. For more information about this case, see Legal Update, Lanham Act Provision Prohibiting Federal Trademark Registration for Disparaging Marks is Unconstitutional: Federal Circuit.
- The Pro-Football, Inc. v. Blackhorse appeal, concerning whether Pro-Football's Washington Redskins trademarks are disparaging under Section 2(a), remains pending before the US Court of Appeals for the Fourth Circuit (112 F. Supp. 3d 439 (E.D. Va. 2015)). For more information about this case, see Legal Update, District Court Affirms TTAB's Cancellation of REDSKINS Trademark Registrations.
- In In re Brunetti, the Federal Circuit is expected to issue a decision on the constitutionality of the scandalousness provision in Section 2(a) barring the registration of immoral or scandalous marks (No. 2015-1109).
The USPTO explained that suspension of action will continue:
- If suspension of an application is based on the disparagement provision, until the last of the following occurs: (1) the period to petition for a writ of certiorari in Tam expires without a petition being filed; (2) a petition for certiorari is denied; or (3) certiorari is granted and the Supreme Court issues a decision.
- If suspension of an application is based on the scandalousness provision, until the Federal Circuit issues a decision in Brunetti, after which the need for further suspension will be re-evaluated.