Immorality, Scandal, and Disparagement at the Trademark Office

In Matal v, Tam, the Supreme Court affirmed the Court of Appeals for the Federal Circuit  in holding that the 15 USC §1052(a)’s prohibition against the registration of disparaging marks was unconstitutional as a violation of the First Amendment,  15 USC §1052(a) provides:

(a) 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;

While the case before the Supreme Court related to disparaging marks (the same prohibition that caused the Washington Redskins to lose their registrations on REDSKINS), in January in In re Brunetti, the U.S. Patent and Trademark Office told the Federal Circuit that:

Although a court could draw constitutionally significant distinctions between these two parts of [§1052(a)]  we do not believe, given the breadth of the court’s Tam decision and in view of the totality of the court’s reasoning there, that there is any longer a reasonable basis in this court’s law for treating them differently.

So, its now open season on immoral, scandalous, and disparaging trademarks.  It didn’t take long for applicants to take advantage of the decision, with applications being filed later the same day.

These types of filings actually began shortly after the Federal Circuit’s December 22, 2015, decision, and will no doubt increase with the Supreme Court’s decision.



Ownership of a Trademark Follows Use

In Lyons v. The American College of Veterinary Sports Medicine and Rehabilitation, [2016-2055](June 8, 2017), the Federal Circuit affirmed the decision of the TTAB cancelling Lyons’ registration of the mark THE AMERICAN COLLEGE OF VETERINARY SPORTS MEDICINE AND REHABILITATION.  Lyons participated in the organization of a committee under the auspices of the  American Veterinary Medical
Association. using the name THE AMERICAN COLLEGE OF VETERINARY SPORTS MEDICINE AND REHABILITATION.  A year after Lyons was dismissed from the committee, she sought and obtained registration of THE AMERICAN COLLEGE OF VETERINARY SPORTS MEDICINE AND REHABILITATION on the Supplemental Register.

The committee petitioned to cancel the Lyon’s registration based on priority of use and Lyons’ fraud in procuring the registration. The cancellation was suspended during the pendency of a civil action between the parties in which Lyons alleged infringement of her registration.  The district court found that the mark had not acquired distinctiveness. but did not cancel the registration.  When the cancellation proceeding resumed, the Board concluded that Lyon’s application was void ab initio because she did not own the mark.

The Federal Circuit said that it was axiomatic in trademark law that ownership of a
mark is predicated on priority of use in commerce.  Thus, the Federal Circuit reasons, registration by one who did not own the mark at the time of filing renders the underlying application void ab initio. The Federal Circuit agreed with the Board that Lyons did not own the mark, and approving the Board’s legal framework for evaluating ownership, which included (1) the parties’ objective intentions or expectations; (2) who the public associates with the mark; and (3) to whom the public looks to stand behind the quality of goods or services offered under the mark.