No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.

15 U.S.C § 1052 (a)

15 U.S.C § 1052 (a) is comprised of three “clauses.”  The “immoral and scandalous” clause; the “disparagement” clause; and a clause prohibiting the registration of geographical indications on wines or spirits that indicate a place of origin other than the actual place of origin.

Two recent Supreme Court decisions have significantly altered the ability of the Patent and Trademark (PTO) to refuse registration of marks that previously might have been judged as “offensive” and as such not registrable.

In Matal v. Tam, 582 U.S. ___ (2017), the Court considered the constitutionality of the disparagement prohibition of 15 U.S.C § 1052 (a).  Tam involved a filing for the mark “THE SLANTS” by a dance rock band whose members are Asian-Americans.  The registration was denied by the PTO based upon a finding that the word “slants” is often used in a derogatory manner to describe persons of Asian descent and thus violated the “disparagement clause.”

The Court held the clause violated the Free Speech Clause of the First Amendment finding that:  “It [the clause] offends a bedrock First Amendment principle:  Speech may not be banned on the ground that it expresses ideas that offend.”  In coming to its conclusion, the Court analyzed if registering a mark triggered government speech concerns; if a registered mark is commercial speech; and if a registered mark is commercial speech, did 15 U.S.C § 1052 (a) meet the four-pronged test set forth in Central Hudson Gas & Electric Corp. v. Public Service Commission.  The Court concluded that the prohibition on registration was viewpoint based and therefore unconstitutional.

In the second case, Iancu v. Brunetti, 588 U.S. ___ (2019), the court considered the “immoral or scandalous” prohibition of 15 U.S.C § 1052 (a).  Eric Brunetti sought trademark registration for his clothing brand FUCT.  The PTO rejected the application finding that the mark FUCT was “extremely offensive” and as such violated the prohibition against registering immoral or scandalous marks.  As in Tam, the Court found that the registration prohibition was viewpoint based and as such unconstitutional and that the mark should be registered.

So where does this leave the PTO with respect to declining registration of marks that might be considered “offensive”?  It seems that after Tam and Brunetti the PTO has little, or perhaps no, authority to deny registration for any such mark, since by definition such denial would require a “viewpoint based” determination by the PTO which on its face is unconstitutional.  That of course does not mean there is an open season on all manner of registrations.  Neither Tam nor Brunetti relaxes other requirements for registration of a mark, e.g., that the mark must be used in commerce; that it not be merely descriptive or generic; or that it not present a likelihood of confusion with an existing mark.  In addition, the mark can still be removed from the register under certain circumstances upon application by the Federal Trade Commission.