Mark my words (even if they offend you)

The U.S. Supreme Court's unanimous decision in Matal v. Tam will have a significant impact on potentially offensive trademarks and it already has. The June 19 ruling found that the long-standing prohibition against registering "disparaging" trademarks violates the First Amendment clause of free speech. Since the ruling, the Justice Department announced last week it is giving up its fight against the Washington Redskins to change the team name, which is considered by many to be offensive to Native Americans. Going forward, there may be a flurry of new filings or re-filings for trademarks that contain potentially offensive terms, such as some of the verbiage from Donald Trump's infamous "locker room talk" rant. The Matal v. Tam case concerned the name of the Asian-American dance band "The Slants." Lead singer Simon Tam was previously denied federal registration of the mark "The Slants" by the U.S. Patent and Trademark Office under the Lanham Act, which prohibited the registration of trademarks that may "disparage.or bring...into contempt or disrepute" any "persons, living or dead." In the Supreme Court opinion, Justice Samuel A. Alito Jr. wrote, "This provision. offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend." The Redskins case had been on hold in the federal appeals court until the decision was rendered in Matal v. Tam. "I am thrilled. Hail to the Redskins," team owner Dan Snyder, who had refused to change the name, said in a statement after the Slants decision was announced. Long Island intellectual property attorneys John DeMaro and Pina Campagna said they were not very surprised by the Supreme Court's decision, though Campagna said she found it surprising that it was a unanimous decision. "As trademark attorneys we want our clients to be able to protect their marks regardless of whether they are considered disparaging and offensive to some," said Campagna, a partner at Carter, DeLuca, Farrell & Schmidt in Melville. "It shouldn't be considered government speech or a right granted by the government to trademark owners." The decision will be "pretty encouraging" to "clients, both individuals and businesses, who are seeking federal trademark registration over controversial brand names," Campagna said. "For other clients it may still be an uncomfortable thought that a business or person can gain commercial success over something profane and offensive." At this stage, "it is unclear if this decision is going to open the floodgates of people who want to register disparaging phrases," said DeMaro, a partner at Ruskin Moscou Faltischek in Uniondale, who chairs the firm's intellectual property group. For instance, last fall, after Donald Trump's "locker room talk" recording was made public, several trademark applications were filed unsuccessfully for phrases uttered by Trump, such as "Grab her by the ----," with the goal of putting the message on bumper stickers, T-shirts and other merchandise for sale. "We may see some flurry of people [who were refused registrations] re-filing their applications," Campagna said. "And of course there will be completely new filings trying to obtain registration for questionable marks." However, Campagna said, it's important to note this decision only impacts the disparagement portion of the statute. "Based on the decision, marks can still be refused for being immoral, scandalous, or for falsely suggesting a connection with persons, institutions, beliefs or national symbols, or bringing them into contempt or disrepute," she said. However, that may change as well. "A lot of trademark practitioners think the sections regarding prohibition of immoral or scandalous registrations are going to be stricken based on free speech grounds," DeMaro said. Another important consideration is that in order to register a trademark, applicants must be able to demonstrate it will be used in conjunction with a product or service. "So even if the Trademark Office must now allow disparaging marks to be registered (assuming there is no likelihood of confusion with another registered or pending mark), trademarks may not be registered if there is no intent to use the mark in commerce on an actual product or in connection with a service," Campagna said. "In other words, you can't just file on a mark for registration just because you want to own that mark and stop anyone from using that mark in connection with anything. We trademark attorneys have all gotten that call at least once before by a potential client and we have had to turn them down because an affidavit (under oath) must be signed that there is a bona fide intent to use the mark when filing the application. Therefore, the applicants of these disparaging or offensive marks may soon realize that the marks may have little, if any, commercial value." Published: Thu, Jul 13, 2017