Oceans of ink and zillions of electrons have been spilled commenting on the Supreme Court’s recent decision in Matal v. Tam, in which the Court held that the Trademark Act’s prohibition on registration of “disparaging” marks is unconstitutional. Section 2(a) of the Act, among other things, bars registration of marks which “may disparage… persons living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” This section was cited by the Patent & Trademark Office in refusing to register the mark THE SLANTS, as used by an Asian-American musical group. The Supreme Court concluded that the disparagement clause of Section 2(a) amounted to impermissible viewpoint discrimination – the government was restricting speech solely because it was disagreeable.
Also making its way up the federal court system is an appeal regarding a related provision of Section 2(a), which bars marks which are “immoral” or “scandalous.” In re Brunetti, which is an appeal from the refusal of the mark FUCT for various items of apparel (notably including children’s and infants’ apparel), is currently before the U.S. Court of Appeals for the Federal Circuit. It is widely anticipated, based on the Supreme Court’s decision in Tam, that the “immoral and scandalous” provision of Section 2(a) will fall as well (although the PTO’s appellate lawyers have recently taken the opposite position – that Tam is not necessarily fatal to the immoral and scandalous clause).
Not surprisingly, Section 2(a) has come into play in cases involving alcoholic beverages. Purveyorsofbeer in particular seem to like to push the envelope in their branding. Thus, in 2006, the Trademark Trial & Appeal Board upheld the refusal of Red Bull’s application for the mark BULLSHIT, for an array of alcoholic and non-alcoholic beverages. In re Red Bull GmbH, 78 USPQ2d 1375 (TTAB 2006, precedential). In 2010, a divided Board affirmed the refusal of the mark KHORAN for wine, on the grounds that the mark is disparaging for Muslims (whose sacred text, the Koran, bans the consumption of alcohol). In re Lebanese Arak Corp., 94 USPQ2d 1215 (TTAB 2010, precedential). One year later, in another precedential decision, the Board upheld the scandalousness refusal of a mark consisting of the design of a bottle shaped like a hand with its middle finger extended, for beer and other alcoholic beverages. In re Luxuria, s.r.o., 100 USPQ2d 1146 (TTAB 2011, precedential).
But in its most recent foray into Section 2(a) in the alcohol context, the Board seemed to be loosening up a little. Engine 15 Brewing Co. applied to register the mark NUT SACK DOUBLE BROWN ALE for beer, and the examining attorney refused registration on the grounds that the term NUT SACK was a vulgar reference to the male anatomy and therefore offensive to a substantial composite of the general public. The applicant raised a number of arguments about potential non-offensive meanings of the mark – for example that it suggested that the beer tasted like a sackful of nuts, or that it referred to a traditional method of adding flavor to beer during fermentation. Interestingly, the Board was largely unpersuaded by most of these arguments, but acknowledged that “Nut” does indeed describe the flavor of the beer. On balance, however, the Board accepted the examiner’s evidence that the primary significance of “Nut Sack” is anatomical – but nevertheless reversed the refusal. Even if the phrase “may well raise eyebrows at a formal dinner party,” it is not so shocking or offensive to be barred by Section 2(a). Indeed, the Board noted: “This is an adult beverage, the consumption of which is commonly associated with the relaxation of inhibitions…. We conclude that beer drinkers can cope with Applicant’s mark without suffering meaningful offense.” In re Engine 15 Brewing Co. LLC, Serial No. 86038803 (TTAB Oct. 29, 2015, not precedential).
Although a non-precedential decision, the Engine 15 opinion is good reading because it provided alcohol industry applicants with a useful roadmap for defending the registrability of marks containing racy double-entendres. Now, however, that roadmap may not be needed any more in the wake of Tam, at least with respect to disparaging marks. Meanwhile the PTO has suspended all applications facing immoral/scandalous refusals pending the outcome of Brunetti. So soon the only remaining limits on controversial trademarks could be applicants’ imaginations and the risk of picking a mark that even beer drinkers cannot cope with.
Robert O’Connell is Of Counsel in the Boston office of Fish & Richardson. His practice focuses on trademark and copyright strategic advice, prosecution and enforcement, including all aspects of domestic and international trademark law; registration and protection of...