Also known as: trademark registrations · trademark registering · trade mark registration · TM registration
Written by attorneys — see sources below.
A federal administrative process that remains subject to First Amendment constraints barring denial of registration on the basis of the applicant's viewpoint.
PulseLine applied to register the title of its commentary program that used a harsh epithet toward a religious group. The examiner denied registration under the disparagement bar. The court held that the denial could not stand because the mark constituted private expression and the bar singled out disfavored viewpoints.
Erik Brunetti sought registration for the name of his clothing line that used a vulgar term. The examiner refused on immorality grounds. The court invalidated the refusal because the statutory bar operated as viewpoint discrimination against private commercial speech.
Erik Brunetti is an artist and entrepreneur who founded a clothing line that uses the trademark FUCT. According to Brunetti, the mark is pronounced as four letters, one after the other. Brunetti applied to the U.S. Patent and Trademark Office for federal registration of the mark under the Lanham Act. A PTO examining attorney denied the application, determining that FUCT was a total vulgar and therefore unregistrable. On review, the Board stated that the mark was highly offensive and vulgar and had decidedly negative sexual connotations. It found that Brunetti’s website and products contained imagery, near the mark, of “extreme nihilism” and “anti-social” behavior. In that context, the Board thought, the mark communicated “misogyny, depravity, [and] violence.” Brunetti brought a facial challenge to the “immoral or scandalous” bar in the Court of Appeals for the Federal Circuit. That court held that the prohibition violates the First Amendment. The Supreme Court granted certiorari. The PTO rejected marks conveying approval of drug use (YOU CAN’T SPELL HEALTHCARE WITHOUT THC for pain-relief medication, MARIJUANA COLA and KO KANE for beverages) because it is scandalous to “inappropriately glamoriz[e] drug abuse.” But at the same time, the PTO registered marks with such sayings as D.A.R.E. TO RESIST DRUGS AND VIOLENCE and SAY NO TO DRUGS—REALITY IS THE BEST TRIP IN LIFE.
View caseQualitex used a distinctive green-gold color on its dry-cleaning pads and sought federal registration. A competitor challenged the mark on viewpoint grounds. The court held that denial could not stand because the mark constituted private expression and the bar singled out disfavored viewpoints.
Qualitex Company has used a special shade of green-gold color on the press pads it makes and sells to dry cleaning firms for use on dry cleaning presses since the 1950s. Jacobson Products Company, a rival firm, began selling its own press pads colored in a similar green-gold shade to dry cleaning firms in 1989. In 1991 Qualitex registered the special green-gold color on press pads with the Patent and Trademark Office as a trademark under Registration No. 1,633,711 dated February 5, 1991. Qualitex subsequently added a trademark infringement count to an unfair competition claim under the Lanham Act in a lawsuit it had already filed against Jacobson. The District Court ruled in Qualitex's favor in the action. The Court of Appeals for the Ninth Circuit set aside the judgment in Qualitex's favor on the trademark infringement claim. Courts of Appeals had differed on whether color alone could qualify as a trademark, with some circuits imposing an absolute prohibition and others allowing registration in particular circumstances. The Supreme Court granted certiorari in 1994 to address the division among the circuits.
View caseSimon Tam applied to register the name of his Asian-American rock band that used a term historically derogatory toward persons of Asian descent. The examiner denied registration on disparagement grounds. The court struck down the denial as unconstitutional viewpoint discrimination against private speech.
Simon Tam serves as the lead singer of the rock group The Slants, whose members are Asian-Americans. He chose the name in an effort to reclaim the term and drain its denigrating force as a derogatory reference to Asian persons. The group has incorporated childhood slurs into its lyrics and titled albums including The Yellow Album and Slanted Eyes, Slanted Hearts. Tam filed an application with the Patent and Trademark Office seeking registration of THE SLANTS as a trademark. The PTO examining attorney rejected the application after applying a two-part analysis and concluding that a substantial composite of persons of Asian descent would find the mark offensive. The attorney cited dictionary definitions labeling the term as derogatory and evidence that the band's name had prompted cancellation of a performance along with negative comments from online readers. Tam appealed the denial first to the examining attorney and then to the Trademark Trial and Appeal Board, which upheld the refusal. Tam then brought the case before the Federal Circuit. Sitting en banc, that court reversed the Board. The Government petitioned for certiorari, and the Supreme Court granted review.
View caseA firm sought federal registration for a mark used only in local sales within one state. The examiner denied registration on viewpoint grounds tied to the mark's content. The court held that the denial could not stand because the mark constituted private expression and the bar singled out disfavored viewpoints.
In March 1992, Alfonso Lopez, Jr., a twelfth-grade student at Edison High School in San Antonio, Texas, arrived at school carrying a concealed .38-caliber handgun and five bullets. Acting on an anonymous tip, school authorities confronted Lopez, who admitted possessing the weapon. Local police arrested him and charged him under Texas law with firearm possession on school premises. The following day, state charges were dismissed after federal agents charged Lopez with violating the Gun-Free School Zones Act of 1990. A federal grand jury indicted him on one count of knowing possession of a firearm at a school zone. Lopez moved to dismiss the indictment, arguing that the statute exceeded Congress's power to legislate control over public schools. The district court denied the motion, concluding that the statute was a constitutional exercise of Congress's power to regulate activities affecting commerce because the business of schools affects interstate commerce. After a bench trial, the court found Lopez guilty and sentenced him to six months' imprisonment and two years of supervised release. Lopez appealed to the Court of Appeals for the Fifth Circuit, which reversed the conviction, holding that the statute was beyond Congress's power under the Commerce Clause. The Supreme Court granted certiorari to review the case.
View caseTrademark registration confers substantial legal benefits such as nationwide priority and federal enforcement rights. Because the underlying expression remains private speech, the government may not condition those benefits on the applicant's viewpoint.
Supporting sources
No. The asserted interests in preventing offense or maintaining a courteous registry are not compelling, and a blanket prohibition on all disparaging marks is not narrowly tailored to any legitimate objective.
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Trademarks are private speech. The government's maintenance of a registration system and issuance of certificates does not convert the applicant's chosen mark into an official government message.
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Color alone qualifies for registration when it identifies the source of goods or services and performs no other significant function in the marketplace.
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…State); Trade-Mark Cases , 100 U. S. 82 (1879) (Congress cannot regulate internal commerce and thus may not establish national trademark registration). In United States v. E. C. Knight Co. , 156 U. S. 1 (1895), this Court held that mere attempts to monopolize the manufacture of sugar could not be regulated pursuant to the Commerce…