1203.01 Other Refusals Under 15 U.S.C. §1052(a) No Longer Valid
Until June 19, 2017, the USPTO examined applications pursuant to the provision in Section 2(a) of the Trademark Act, 15 U.S.C §1052(a), that prohibited the registration of a mark that consists of or comprises matter that may disparage, or bring into contempt or disrepute, persons, institutions, beliefs, or national symbols. However, the Supreme Court held this provision of Section 2(a) discriminates based on the applicant’s viewpoint and struck it down as unconstitutional under the Free Speech Clause of the First Amendment in Matal v. Tam, 137 S. Ct. 1744, 122 USPQ2d 1757 (2017).
In addition, until June 24, 2019, the USPTO examined applications pursuant to the provision in Section 2(a) that prohibited the registration of a mark that consists of or comprises immoral or scandalous matter. However, the Supreme Court held this provision of Section 2(a) also is viewpoint discriminatory and thus unconstitutional under the Free Speech Clause of the First Amendment in Iancu v. Brunetti, 139 S. Ct. 2294, 204 L. Ed. 2d 714, 2019 USPQ2d 232043.
Accordingly, that a mark may "disparage . . . or bring . . . into contempt, or disrepute" or that a mark "[c]onsists of or comprises immoral. . . or scandalous matter" are no longer valid grounds on which to refuse registration or cancel a registration. 15 U.S.C §1052(a).
In striking down these provisions in Section 2(a), the Supreme Court purposely refrained from extending its holdings to any other provisions in Section 2(a) or other sections of the Trademark Act that do not restrict trademark registration based on the applicant’s viewpoint. See, e.g., Iancu v. Brunetti, 139 S. Ct. at 2302 n.*, 2019 USPQ2d 232043, at *7 n.* ("Nor do we say anything about how to evaluate viewpoint-neutral restrictions on trademark registration . . . "). The TTAB has since rejected an applicant’s constitutional challenge to Section 2(a)’s "false suggestion" clause, explaining that the provision is viewpoint neutral and "directly furthers the goal of prevention of consumer deception in source-identifiers." In re ADCO Indus.– Techs, L.P., 2020 USPQ2d 53786, at *10 (TTAB 2020) (noting that "Congress acts well within its authority when it identifies certain types of source-identifiers as being particularly susceptible to deceptive use and enacts restrictions concerning them").