What Will Impact Be of Supreme Court's <i>Tam</i> Decision?

Section 2(a) bars the registration of several categories of marks, including those “consisting or comprising immoral … or scandalous matter, or … which may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” This language has two distinct prongs, namely, whether a mark is “immoral or scandalous,” and whether a mark “may disparage”; only the latter prohibition was at stake in Tam. The two bans are closely related, and it is possible for a mark to be rejected under both. See, e.g., Boston Red Sox Baseball Club LP v. Sherman, 88 U.S.P.Q.2d 1581 (T.T.A.B. 2008) (refusing registration to SEX ROD mark for clothing). In addition, if a challenge is brought to an existing registration under these prongs of §2(a), the challenger must demonstrate the registration “was obtained” in violation of the statute, meaning that the challenger's showing must focus on whether the mark in question was scandalous, immoral or potentially disparaging on the date it was registered (see, 15 U.S.C. §1064(3)), rather than when the merits of the challenge are decided.

Nevertheless, there are significant differences in how the U.S. Patent and Trademark Office (USPTO) and courts traditionally have interpreted these two prongs of §2(a). One is that, although the challenger to the registrability of a mark under the first prong must demonstrate actual immorality or scandal to prevail, a mere showing of potential disparagement would suffice under the second prong. Another is how an offense under the two prongs has been measured: 1) where scandal and immorality are concerned, whether the mark consists of or comprises scandalous matter must be determined from the standpoint of a substantial composite of the general public (although not necessarily a majority); but 2) if the mark's meaning was found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group. A mark therefore could be unregistrable under the “may disparage” prong of §2(a), even if the general public (as opposed to the referenced group) did not find it offensive.