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March 11 — Registration applications for trademarks that are scandalous or disparaging will be subject to “advisory refusals” until the constitutionality of a provision barring such registrations is resolved, according to an examination guideline issued March 10 by the Patent and Trademark Office.
Section 2(a) of the Lanham Trademark Act of 1946, 15 U.S.C §1052(a), prohibits the PTO from registering trademarks that are scandalous or disparaging.
However, the U.S. Court of Appeals for the Federal Circuit in December ruled that the bar against disparaging trademark registrations is an unconstitutional restriction on free speech.
The PTO is currently determining whether to seek the Supreme Court's review of the decision.
The Federal Circuit's ruling came in a proceeding over whether an Asian American rock band can register “The Slants” as a trademark. The PTO rejected the application on the grounds that the mark was derogatory to Asians.
The issue has also come up in another case in which the Trademark Trial and Appeal Board found that the name “Redskins” as used by the NFL team in Washington is disparaging and thus not registrable.
If the Trademark Act's bar on registration of disparaging terms is a violation of free speech, it also raises the issue whether the bar on registration of scandalous terms is also unconstitutional.
The examination guideline states that while this question is pending, trademark examiners will issue only “advisory refusals” for scandalous and disparaging trademarks and any further action on such registration applications will be suspended.
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