Trademarks: What Is Socially Acceptable?

Trademarks are a vital part of how your business is branded and how you appeal to clients and consumers.  What about those trademarks that push the boundaries on what is socially acceptable?  Generally, the government may not protect those marks that are beyond what is socially acceptable.  What is socially acceptable now?  Can the same standards apply and restrict what you can trademark?  To what extent can you push the boundaries in your branding?

How did the court rule in In Re Tam?

In recent times, the United States Patent and Trademark Office (USPTO) has ceded the restrictions on demeaning and offensive marks.  This is in response to the recent “Slants” case, where Simon Tam, a musician, filed a trademark application for his band’s name “The Slants.”  His trademark application was then denied under Section 2(a) of the Lanham Act.  This section prohibits the use of immoral, deceptive, or scandalous marks that may disparage living or dead people.  This section is infamous for the reason why the Washington Redskins trademark was cancelled.  However, Mr. Tam contested the refusal of his trademark, claiming that he wanted to take back the word “Slants” for his band, resting his argument on the First Amendment.  In doing so, through a long legal battle, the Federal Circuit eventually found for Tam, in an en banc hearing, stating that Section 2(a) violated his First Amendment right.  Furthermore, while the ruling had only applied to the disparaging part of the section, the USPTO ceded that the “scandalous and immoral” aspects of the legislation were likely to be unenforceable for similar reasons.

What is the new standard?

In applying for trademarks, for those brands where it may be appropriate, a scandalous or immoral mark could be pursued.  This opens up a wider variety of trademarks in the public realm, with some marks that could be seen as disparaging being allowed for reasons similar to In Re Tam.  Notably, this allows for trademarks to be created in mind of the changing times and “retaking” of words to create something new.  The changing standards are now removed, and the morality of trademark law has temporarily been removed from the equation.  If nothing else, this also removes the question of whether a potential trademark could be seen as offensive.  While the trademark application could be stymied for other reasons, it now simplifies the standard to one that focuses on the chances for confusion, as well as, the chances that it may be generic.

However, it is best to keep in mind that there is a potential split on this issue.  As it stands, principally because of the earlier decision related to the Washington Redskins, the decision is open to a change by the Supreme Court.  It is unknown what the stance is on the matter yet, however, given the recent changes, there is a likelihood that it may stand.

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