Page 15 “scandalous.” The “scandalous” provision was also not directly at issue in Tam and therefore the Court did not address it. However, in a foot- note, the Federal Circuit assumed it to be uncon- stitutional in its own decision in In re Tam, which the Court affirmed on appeal.16 Therefore, it stands to reason that if challenged, much like the “disparagement” provision, the “scandalous” provision will almost surely be held to be uncon- stitutional. Finally, Tam may also have implications for the patent world. Section 1504.01(3) of the Manual of Patent Examining Procedure (“MPEP”) directs patent examiners to reject design patent applica- tions that “disclose subject matter which could be deemed offensive to any race, religion, sex, ethnic group, or nationality, such as those which in- clude caricatures or depictions.”17 Similarly, Sec- tion 608 of MPEP instructs patent examiners to object to any patent application that uses “language that could be deemed offensive to any race, religion, sex, ethnic group, or nationality… [or] the inclusion in application drawings of any depictions or caricatures that might reasonably be considered offensive to any group . . . .”18 These provisions are likely unconstitutional un- der the reasoning in Tam. *Vishwanath (“Vish”) Kootala Mohan is an intel- lectual property attorney specializing in patents, copyrights, and trademarks at ONE LLP, a bou- tique law firm specializing in intellectual proper- ty and entertainment law. He regularly writes and speaks on intellectual property law issues. He can be reached at or at (949)432-9996. *Mariah Witt is a second-year law student at University of San Diego School of Law. She is interested in intellectual property, corporate, and business law. She can be reached at mari- Disclaimer: The views and opinions expressed in this article are solely those of the authors and do (Continued from page 13) not reflect the views or opinions of the firm or its clients. The article is for gen- eral information purposes and is not in- tended to be and should not be taken as legal advice. 1 Matal v. Tam, 137 S. Ct. 1744 (2017). 2 The case was initially named Lee v. Tam. However, during the pendency of the case in the Supreme Court, on June 6, 2017, the then USPTO director Ms. Michelle Lee resigned and the case was renamed Matal v. Tam since Mr. Joseph Matal was ap- pointed the interim director of the USPTO. 3 Although a service mark is what identi- fies a source of services rather than goods, “trademark” is often used interchangea- bly. 4 See The Lanham (Trademark) Act (Pub. L. 79–489, 60 Stat. 427, enacted July 5, 1946, codified at 15 U.S.C. § 1051 et seq. (15 U.S.C. ch. 22). 5 15 U.S.C. §1052 (a). 6 Tam, 137 S. Ct. at 1750. 7 Id. at 1758. 8 Id. at 1759 (citing the trademark regis- trations for: “make.believe,” Registration No. 4,342,903 (May 28, 2013); “Think Dif- ferent,” Registration No. 2,707,257 (Apr. 15, 2003); “Just Do It,” Registration No. 1,875,307 (Jan. 25, 1995); “Have It Your Way,” Registration No. 0,961,016. (June 12, 1973); and “EndTime Ministries,” Reg- istration No. 4,746,225 (June 2, 2015)). 9 Id. at 1761. 10 Id. at 1763. 11 Id. at 1764. 12 Id. 13 See Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439 (E.D. Va. 2015). (Continued on page 17) Supreme Court Slants in Favor of the First Amendment Spring/Summer 2018