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Scandalous and Disparaging or First Amendment Protected Free Speech? To Trademark or Not to Trademark?

There was a new Ruling by the Federal Circuit Court of Appeals that stated that the First Amendment Protects the use of the trademark “Slant” by a music band and it is entitled to register the mark.  This in stark contrast to the USPTO’s cancellation of the Redskins mark as being disparaging and not entitled to trademark protection.  This may permit trademark owners to make new arguments based on the First Amendment’s protection of private or commercial speech.

However, the Federal Circuit’s Ruling is not binding on the USPTO or the Fourth Circuit Court of Appeals Court that will be hearing the Redskins teams appeal to avoid cancellation of their registrations for the Redskins mark.  The US Supreme Court may end up having to take up the issue, but we shall see what the Fourth Circuit Court of Appeal’s decides.  There may be new life for trademark owners that selected marks, because of humor value and not to offend, disparage or be scandalous.

Often times what is scandalous and disparaging changes over time and your brand or trademark may not be as limited as the USPTO’s trademark examiner believes.  However, it will take a Ruling from the US Supreme Court or the Trademark Trials and Appeals Board that protects a scandalous or disparaging mark under the First Amendment before the trademark examiner is required to follow such Rulings.  Thus, it is often, necessary to consider societal or customary use of slang or trademarks before investing in the brand and registering it as a trademark.

However, keep in mind that a trademark owner may have common law rights to the slang term or mark, even though it is not registrable with the USPTO.

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