USPTO Issues New Examination Guide for Section 2(a) Disparagement and Scandalousness Cases

The USPTO has issued Examination Guide No. 1-17 (pdf here), entitled "Examination Guidance for Section 2(a)’s Disparagement Provision after Matal v. Tam and Examination for Compliance with Section 2(a)’s Scandalousness Provision While Constitutionality Remains in Question." The Guide explains "how the USPTO will examine applications following the Supreme Court’s decision in Tam."

Disparagement: As a result of the Supreme Court's decision in Tam, the disparagement provision of Section 2(a) is no longer a valid ground for refusal or cancellation of a registration. Consequently, "the portions of Trademark Manual of Examining Procedure (TMEP) §1203 that relate specifically to examination under the disparagement provision no longer apply. Applications that received an advisory refusal under the disparagement provision and were suspended pursuant to Examination Guide 01-16 [pdf here] will be removed from suspension and examined for any other requirements or refusals. If an application was previously abandoned after being refused registration under the disparagement provision, and is beyond the deadline for filing a petition to revive, a new application may be filed."

Scandalousness: The FUCT appeal (In re Brunetti), which challenges the constitutionality of the scandalousness provision of Section 2(a) is currently suspended at the CAFC. [TTAB decision TTABlogged here]. The CAFC has ordered the parties to submit supplemental briefing, "explaining how the constitutionality of the scandalousness provision should be resolved in light of the Supreme Court’s decision in Tam."

[T]he USPTO continues to examine applications for compliance with that provision according to the existing guidance in the TMEP and Examination Guide 01-16. 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 reevaluate the need for further suspension.

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TTABlog comment: What's your prediction as to the outcome of Brunetti?

Text Copyright John L. Welch 2017.