"Locker Room Talk" May Be Trademarkable After Matal V. Tam, Says Loza & Loza LLP

SAN DIEGO, June 27, 2017 /PRNewswire/ -- IP law firm Loza & Loza LLP welcomes the Matal v. Tam¹ decision but cautions that this could make "locker room talk," like "grab 'em by the pussy," trademarkable. While many were surprised or even outraged by some of the comments President Trump made during his race to the White House, they probably didn't think that they were trademark-worthy. At least a few people disagree, however. Four applications have been filed at the USPTO in an attempt to register trademarks in connection with variations of this term. For instance, a trademark application was filed for the mark GRAB HER BY THE PUSSY in connection with bumper stickers, hats, and t-shirts. "Perhaps not surprisingly, the Trademark Office has refused registration of this mark on several grounds," says Samantha Markley, Trademark Attorney at Loza & Loza.

One reason registration was refused is because this mark includes matter that "may" be considered scandalous or immoral. For a mark to be "scandalous," the evidence must show that the mark would be considered shocking to a person's sense of decency or propriety, would offend a person's conscience or moral feelings, or would cause people to call out in condemnation.² The Trademark Office cited ample evidence establishing that the word is vulgar, and would especially be viewed as such in the context of the well-publicized quote.

However, in Matal v. Tam, the Supreme Court held that the disparagement clause of the Trademark Act violates the Free Speech Clause of the First Amendment, and is therefore unconstitutional.³  The disparagement clause prohibits the registration of a trademark, "which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute."⁴ The Court explained that speech "may not be banned on the ground that it expresses ideas that offend."⁵ The Court went on to state that speech "that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express 'the thought that we hate.'"⁶

Samantha Markley concludes that "following the Supreme Court's logic in Matal v. Tam, it seems likely that the scandalous clause of the Trademark Act, which prevents marks from being registered if they would 'offend' a person's conscience, would be found to violate the First Amendment for the same reasons as the disparagement clause. This could lead to the granting of this and similar trademarks in the future."

¹ Docket N. 15-1293
² In re Fox, 702 F.3d 633, 635, 105 USPQ2d 1247, 1248 (Fed. Cir. 2012) (quoting In re Mavety Media Grp. Ltd., 33 F.3d 1367, 1371, 31 USPQ2d 1923, 1925 (Fed. Cir. 1994)); see TMEP §1203.01.
³ Matal v. Tam, 582 U. S. ____ (2017).
⁴ 15 U.S.C. §1052(a)
⁵ Matal v. Tam, 582 U. S. ____ (2017) at 2.
⁶ Matal v. Tam, 582 U. S. ____ (2017) at 25.

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SOURCE Loza & Loza LLP