Trademark Alert: New Examination Guide Issued on Section 2(a) after Matal v. Tam

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Trademark Alert


"Examination Guidance for Section 2(a)’s Disparagement Provision after Matal v. Tam and Examination Compliance with Section 2(a)’s Scandalousness Provision While constitutionality Remains in Question” is now available on the Trademark Examination Guides page.  

Section 2(a) of the Lanham Act, 15 U.S.C. §2(a), bars registration of marks that consist of or comprise immoral or scandalous matter (“the scandalousness provision”), or matter which may disparage persons, institutions, beliefs, or national symbols, or bring them into contempt or disrepute (“the disparagement provision”).   

In Tam the Supreme Court held that the disparagement provision violates the Free Speech Clause of the First Amendment. Accordingly, that a mark may “disparage . . . or bring . . . into contempt, or disrepute” is no longer a valid ground on which to refuse registration or cancel a registration.   

Because the constitutionality of the scandalousness provision remains pending before the Federal Circuit in In re Brunetti, No. 15-1109 (Federal Circuit), we continue to examine applications for compliance with that provision according to the existing guidance in the Trademark Examining Manual of Examining Procedure (TMEP) and Examination Guide 01-16.