USPTO Examination Guide 01-16: Suspension for Section 2(a) Disparagement and Scandalousness Cases

On March 10, 2016, the USPTO issued Trademark Examination Guide 01-16, stating that the Office will be suspending action on pending applications involving marks subject to refusal under the disparagement and the scandalousness provisions of Lanham Act Section 2(a). This action resulted from the pending appeals in the cases involving the marks THE SLANTS, REDSKINS, and FUCT, as briefly discussed below.

The constitutionality of the scandalousness provision is an issue that the USPTO expects to be decided by the Federal Circuit in In re Brunetti (No. 15-1109). [TTABlogged here] The constitutionality of the disparagement provision is an issue in two cases in the federal courts of appeal: In re Tam (No. 14-1203, Federal Circuit) [TTABlogged here] , and Pro-Football v. Blackhorse (No. 15 1874, Fourth Circuit) [District Court decision TTABlogged here]. The Pro-Football appeal remains pending before the U.S. Court of Appeals for the Fourth Circuit. The Tam appeal was decided by the U.S. Court of Appeals for the Federal Circuit on December 22, 2015. The Federal Circuit held that the disparagement provision is facially unconstitutional under the First Amendment, abrogating prior circuit precedent that had found the provision constitutional. In re Tam, 808 F.3d 1321, 1358, 117 USPQ2d 1001, 1025 (Fed. Cir. 2015) (en banc), as corrected (Feb. 11, 2016). The Tam decision remains subject to potential Supreme Court review. 28 U.SC. §1254; see also Application of Michelle K. Lee to Extend the Time to File a Petition for a Writ of Certiorari, March 9, 2016 (Supreme Court No.15A925).

The USPTO will continue to examine applications for compliance with these provision of Section 2(a), in accordance with existing guidance in the Trademark Manual of Examining Procedure § 1203. However, for any new applications the Office will issue only advisory refusals under "scandalous, immoral, or disparaging matter" provisions.

Any suspension of an application based on the scandalousness provision of Section 2(a) will remain in place until the Federal Circuit issues a decision in Brunetti, after which the USPTO will re-evaluate the need for further suspension. Any suspension of an application based on the disparagement provision of Section 2(a) will remain in place until at least the last of the following occurs: (1) the period to petition for a writ of certiorari (including any extensions) in Tam expires without a petition being filed; (2) a petition for certiorari is denied; or (3) certiorari is granted and the U.S. Supreme Court issues a decision.

Read comments and post your comment here.

TTABlog comment: I suppose if a mark is both disparaging and scandalous, the application will be suspended twice? I decline to offer any examples.

Text Copyright John L. Welch 2016.