Matal v. Tam Archives

Apr 11, 2019

Brunetti and the Tests of Tam

On Monday, April 15, 2019 arguments in the Brunetti case [Iancu v. Brunetti, No. 18-302] will be heard at the United States Supreme Court. Erik Brunetti seeks to register the mark FUCT for clothing. Brunetti’s application was rejected for registration by the United States Patent and Trademark Office on the basis that it violates the Lanham Act, 15. U.S.C. 1052(a) which prohibits the registration of marks comprised of “immoral” or “scandalous” matter. The arguments by the government and Brunetti are sure to echo some of the arguments made in the so-called SLANTS case, Matal v. Tam, 137 S. Ct. 1744… Read more

Jul 11, 2017

USPTO Issues New Guidance to Examiners in Light of Tam Ruling

On June 26, 2017, the U.S. Patent and Trademark Office (USPTO) issued Examination Guide 1-17 to address the Supreme Court’s decision Matal v. Tam, 582 U.S. ___ (2017), which held that the disparagement provision in Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), constitutes viewpoint discrimination and is facially unconstitutional under the First Amendment’s Free Speech Clause. Starting in March 2016, the USPTO began suspending applications for marks subject to refusal under the disparagement and scandalousness provisions of Section 2(a) pending decisions on the constitutionality of these provisions in Tam (disparagement) and In re Brunetti, No. 15-1109 (Fed…. Read more

Jun 19, 2017

THE SLANTS Mark Registrable as Prohibition of “Derogatory” Marks Held Unconstitutional By the Supreme Court

By: Jim Bikoff, Darlene Tzou, and Holly Lance On June 19, 2017, the United States Supreme Court issued a landmark decision in Matal v. Tam, 582 U.S. ____ (2017), unanimously holding the disparagement clause in the Lanham Act unconstitutional on the ground that it violates the First Amendment. This decision upends over 70 years of practice under Lanham Act § 2(a) (15 U.S.C. § 1052(a)). The case will likely have an immediate effect on other pending “derogatory” mark cases, including Blackhorse v. Pro-Football, Inc., 2015 U.S. Dist. LEXIS 90091 (E.D. Va. July 8, 2015) (the “Redskins” case) and may signal… Read more