August 05, 2019 Feature

The Evolving Landscape of Disparaging and Scandalous Trademarks: Historical and Public Relations Perspectives

Stacy L. Wu and Seth I. Appel

©2019. Published in Landslide, Vol. 11, No. 6, July/August 2019, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

Federal trademark law has prohibited registration of disparaging and scandalous marks for generations. While Congress’s original intentions are uncertain, in recent years the disparagement clause has generally prevented registration of marks that are offensive to races, religions, or ethnicities; and the scandalous clause has generally prevented registration of vulgar words and images. This changed with the U.S. Supreme Court’s 2017 decision in Matal v. Tam, striking down the disparagement clause as an unconstitutional restriction on free speech. The Federal Circuit followed suit in In re Brunetti, holding that the scandalous clause also is unconstitutional. Accordingly, the floodgates have opened for registration of disparaging marks, and scandalous marks may not be far behind if the Supreme Court affirms the Federal Circuit decision this year.

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