US Supreme Court rules on disparaging trade marks clause

In the UK, marks that are contrary to public policy or morality will be refused registration as trade marks. In the US, historically, marks that comprise matter which may be disparaging would be refused registration as trade marks.

The United States Patent and Trade Mark Office (USPTO) rejected the trade mark application of Simon Tam, the lead singer of a band called The Slants, for the band's name, on the basis that it comprised matter which may be disparaging.

However, the singer appealed the decision of the USPTO to the United States Court of Appeals for the Federal Circuit which found the disparagement clause which the USPTO relied on to reject the application was unconstitutional due to the restrictions it imposed on the First Amendment right to free speech.

The US Supreme Court in turn faced the issue of considering the disparaging trade marks clause and, it emerged this week, affirmed the Federal Court's judgment, agreeing that the disparagement clause is unconstitutional. In the process, the court established that trade marks are not endorsed by government and represent private speech. It will be interesting to follow the fall out and practical ramifications of the decision.

If you have any questions on the above, please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or legal@mcdanielslaw.com.