Update: Scandalous Marks at the PTO

Surprised Teenager

On July 3, 2019, the PTO issued Examination Guide 2-19, entitled “Examination Guidance for Section 2(a)’s Scandalous Marks Provision after Iancu v. Brunetti.”

By way of background, in December 2017 the CAFC held that the provision violates the First Amendment because it restricts free speech. In re Brunetti, 877 F.3d 1330, 125 USPQ2d 1072 (Fed. Cir. 2017). Since then, the PTO has been suspending action on pending applications refused under the “scandalousness” provision until final disposition of the matter. On June 24, 2019, SCOTUS affirmed the judgment of the Federal Circuit. 588 U.S. ___, 2019 USPQ2d 232043 (2019).

In an opinion by Judge Kagan, SCOTUS held the provision is/was unconstitutional under the Free Speech Clause of the First Amendment because it is “facially viewpoint-based”; as such, the fact that a mark may consist of or comprise “immoral” or “scandalous” matter is no longer a valid ground for refusal or cancellation of a registration. Following the Tam decision, SCOTUS confirmed that “a law disfavoring ‘ideas that offend’ discriminates based on viewpoint, in violation of the First Amendment.”

The portions of the TMEP that relate specifically to the examination of immoral or scandalous matter no longer apply. Applications that received advisory refusal under the provision and were suspended will be removed from suspension and examined further for other requirements. If an application was previously abandoned after being refused under the provision and beyond the deadline for filing a petition to revive, a new application can be filed.

The PTO will begin acting on requests after Brunetti’s case is returned to the PTO (at least 25 days after the decision, at the earliest).

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