Lanham Act Section 2(a): What You Need to Know

Key Takeaways

• Section 2(a) of the Lanham Act still bars registration of trademarks that are deceptive or that falsely suggest a connection with another person, institution, belief, or national symbol.
• The disparagement bar was struck down as unconstitutional in Matal v. Tam (2017), and the immoral-or-scandalous bar was struck down in Iancu v. Brunetti (2019). The USPTO can no longer refuse registration on either ground.
• A mark is not disqualified merely because it is offensive, disparaging, or provocative. The government cannot deny registration based on the viewpoint a mark expresses.
• Trademark applications must still meet the ordinary examination criteria, including use or a bona fide intent to use the mark in commerce.
• Applicants should conduct thorough clearance searches to avoid conflicts with existing marks and to confirm the surviving Section 2(a) grounds do not apply.

Overview of the Lanham Act Section 2(a)

Section 2(a) of the Lanham Act, codified at 15 U.S.C. § 1052(a), lists content-based grounds for refusing trademark registration. Historically the provision also barred marks that were disparaging or that were immoral or scandalous, but the Supreme Court has held both of those bars unconstitutional. In Matal v. Tam (2017), the Court struck down the disparagement clause, and in Iancu v. Brunetti (2019), it struck down the immoral-or-scandalous clause. Both bars were viewpoint based, and viewpoint-based restrictions on registration violate the First Amendment.

The grounds that survive under Section 2(a) are narrower and content-neutral in the relevant sense. The provision still prohibits registration of marks that are deceptive and marks that falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols. It also limits registration of certain geographic indications used on wines and spirits. Businesses should understand these surviving grounds when clearing a mark, and they should also understand that a mark can no longer be refused simply because an examiner or a segment of the public finds it offensive.

Disparagement and Trademark Registration (No Longer Enforceable)

The disparagement bar is a historical feature of Section 2(a), not current law. For decades the statute directed the USPTO to refuse registration of marks that may disparage persons, institutions, beliefs, or national symbols. In Matal v. Tam (2017), the Supreme Court held that bar unconstitutional. The Court reasoned that the disparagement clause discriminated based on viewpoint, and that a government cannot refuse to register a trademark merely because it expresses ideas that offend.

The practical effect is significant. A mark can no longer be refused registration on the ground that it is disparaging, and marks that would previously have been rejected on that basis are now registrable. Applicants evaluating a provocative or edgy mark should focus on the grounds that still apply, such as deceptiveness and false suggestion of a connection, rather than on disparagement, which is no longer a valid basis for refusal.

False Suggestions of a Connection

When a trademark conveys a false suggestion of a connection with another entity, it poses significant legal challenges under Section 2(a) of the Lanham Act. This is one of the grounds that survives and remains enforceable. Such deceptive trademarks can mislead consumers into believing that there is an affiliation or endorsement that does not exist. The determination of false connections hinges on several factors, including the fame of the prior name or identity, the closeness of the mark to that identity, and whether the public would reasonably assume a connection. Courts and the USPTO assess whether consumers would likely draw an erroneous conclusion regarding the connection. If found to create a false suggestion of a connection, a trademark may be refused registration. Therefore, businesses must carefully consider the implications of their trademarks to avoid creating false associations, which can undermine brand integrity and result in refusal or litigation.

Other Grounds for Refusal

False suggestion of a connection is not the only ground on which a trademark may face refusal. The deceptiveness bar under Section 2(a) remains fully enforceable: a mark that misdescribes the goods or services in a way that is material to a consumer’s purchasing decision can be refused. Section 2(a) also restricts registration of certain geographic indications used on wines and spirits.

Beyond Section 2(a), other provisions of the Lanham Act supply additional grounds for refusal. A mark may be refused if it is likely to cause confusion with an existing registered mark, if it is merely descriptive or generic, or if it is primarily a surname, among other statutory bases. Note that the immoral-or-scandalous bar that once appeared in Section 2(a) is no longer among these grounds. It was struck down in Iancu v. Brunetti (2019), and the USPTO can no longer refuse a mark on that basis.

The Impact of Section 2(a) on Brand Protection

Section 2(a) continues to shape brand protection, but its reach is narrower than it once was. The surviving grounds, the deceptiveness bar and the false-suggestion-of-a-connection bar, protect consumers from marks that mislead them about the source or affiliation of goods and services. A business clearing a new mark should confirm that the mark does not falsely imply a connection with a person, institution, belief, or national symbol, and that it does not deceptively misdescribe the product.

At the same time, the two viewpoint-based bars that Section 2(a) once contained are gone. Because Matal v. Tam and Iancu v. Brunetti removed the disparagement and immoral-or-scandalous bars, brands can no longer be denied registration simply because a mark is edgy, offensive, or controversial. For most businesses this means the practical Section 2(a) questions during clearance are whether the mark is deceptive and whether it falsely suggests a connection, not whether it might offend.

Case Studies and Legal Precedents

Two Supreme Court decisions define the current landscape under Section 2(a). In Matal v. Tam (2017), the Court held that the disparagement clause violated the First Amendment. The case arose from an application by an Asian American band, The Slants, whose name the USPTO had refused as disparaging. The Court ruled that the government cannot refuse registration based on the viewpoint a mark expresses, and previously rejected marks became registrable.

Two years later, in Iancu v. Brunetti (2019), the Court struck down the prohibition on immoral or scandalous marks on the same First Amendment grounds. The Court explained that this bar, like the disparagement bar in Tam, discriminated based on viewpoint. Together these decisions narrowed Section 2(a) to its content-based but viewpoint-neutral grounds, principally the deceptiveness bar and the false-suggestion-of-a-connection bar, and they confirm that offensiveness alone is no longer a basis for refusing registration.

Strategies for Navigating Section 2(a)

Navigating Section 2(a) requires a clear understanding of which grounds still apply. Effective filing strategy focuses on the surviving bars, deceptiveness and false suggestion of a connection, rather than on the disparagement and immoral-or-scandalous grounds that the Supreme Court has invalidated. By analyzing the right factors, applicants can better position themselves and avoid unnecessary objections.

Understanding Section 2(a)

The current version of Section 2(a) is narrower than its historical text. It no longer bars marks as disparaging or as immoral or scandalous, because those bars were held unconstitutional in Matal v. Tam (2017) and Iancu v. Brunetti (2019). What remains is the prohibition on deceptive marks and marks that falsely suggest a connection with a person, institution, belief, or national symbol, along with the limits on certain geographic indications for wines and spirits. An applicant evaluating a mark should test it against these surviving grounds and should not assume that a provocative or offensive mark will be refused, because offensiveness alone is no longer a lawful basis for refusal.

Filing Strategies and Considerations

Trademark applicants can enhance their likelihood of success by focusing on the requirements that actually apply. Key strategies include:

• Conducting comprehensive trademark searches to identify potential conflicts with existing marks.
• Confirming the mark is not deceptive and does not falsely suggest a connection with another person, institution, belief, or national symbol.
• Meeting the ordinary application requirements, including use or a bona fide intent to use the mark in commerce.
• Engaging legal counsel experienced in trademark registration to evaluate the surviving Section 2(a) grounds.

The Role of the USPTO in Trademark Applications

The United States Patent and Trademark Office (USPTO) plays a central role in the trademark application process, including in applying Section 2(a). Since the Supreme Court’s decisions in Tam and Brunetti, the USPTO no longer examines marks for disparagement or for immoral or scandalous content. Its Section 2(a) review now focuses on whether a mark is deceptive or falsely suggests a connection with another person, institution, belief, or national symbol.

Application Examination Process

The USPTO evaluates each application against statutory requirements. The examination typically confirms:

• Clear identification of the trademark.
• Specified goods or services associated with the mark.
• Evidence of use or a bona fide intent to use the trademark in commerce.
• Payment of applicable fees.

The examining attorney reviews the submitted documentation and determines whether the mark meets the statutory requirements, including the surviving grounds under Section 2(a) and the other bases for refusal in the Lanham Act. Understanding this process helps applicants navigate registration effectively.

Refusal Based on Section 2(a)

Refusals under Section 2(a) now rest on two grounds: that a mark is deceptive, or that it falsely suggests a connection with a person, institution, belief, or national symbol. The USPTO can no longer refuse a mark as disparaging or as immoral or scandalous, because the Supreme Court struck down those bars in Matal v. Tam (2017) and Iancu v. Brunetti (2019). When applicants anticipate a possible Section 2(a) refusal, they should evaluate whether the mark misdescribes the goods in a material way or whether it implies a false connection, and prepare their application accordingly.

Future Trends in Trademark Law and Section 2(a)

Section 2(a) will continue to evolve, but the direction set by the Supreme Court is now well established. The key trends to monitor include:

• How the USPTO and the courts apply the surviving deceptiveness and false-suggestion-of-a-connection grounds after Tam and Brunetti.
• Whether Congress attempts to draft a narrower, viewpoint-neutral registration bar in response to those decisions, and whether any such effort is actually enacted.
• The growing importance of clearance for marks that imply endorsement or affiliation, as brands and public figures police false associations.
• The effect of digital platforms on how consumers perceive source and affiliation.

The through-line is that offensiveness alone is no longer a basis for refusing registration. Businesses clearing a mark should concentrate on whether it is deceptive or falsely suggests a connection, which are the Section 2(a) questions that still control.

Frequently Asked Questions

How Does Section 2(a) Affect International Trademark Applications?

Section 2(a) governs registration with the United States Patent and Trademark Office, so it applies to United States applications, including the United States portion of an international filing. Under current United States law, a mark cannot be refused under Section 2(a) as disparaging or as immoral or scandalous, because the Supreme Court struck down those bars. It can still be refused as deceptive or as falsely suggesting a connection with another person, institution, belief, or national symbol. Applicants filing internationally should remember that other countries apply their own standards, some of which still bar offensive or scandalous marks, so a mark registrable in the United States is not automatically registrable abroad.

Can Trademarks Be Registered if They Contain Disparaging Terms?

Yes. Since Matal v. Tam (2017), a trademark can no longer be refused registration on the ground that it is disparaging. The Supreme Court held the disparagement bar unconstitutional because it discriminated based on viewpoint. A mark that contains a term some people find disparaging can be registered, provided it satisfies the ordinary requirements and does not run afoul of a surviving ground such as deceptiveness or false suggestion of a connection.

What Evidence Is Needed to Challenge a Section 2(a) Refusal?

Because the disparagement and immoral-or-scandalous bars are no longer valid, a current Section 2(a) refusal will rest on deceptiveness or false suggestion of a connection. To challenge a deceptiveness refusal, an applicant typically shows that the mark does not misdescribe the goods or services, or that any misdescription is not material to a purchasing decision. To challenge a false-connection refusal, an applicant shows that the mark does not point uniquely to another person or institution, or that consumers would not assume a connection. Consumer perception evidence, dictionary and marketplace evidence, and the relationship between the mark and the goods can all support the response.

How Often Does the USPTO Update Section 2(a) Guidelines?

The USPTO revises its examination guidance, published in the Trademark Manual of Examining Procedure, from time to time to reflect statutory changes and court decisions. After Matal v. Tam and Iancu v. Brunetti, the USPTO updated its guidance to stop refusing marks as disparaging or as immoral or scandalous. Applicants and counsel should watch for further updates that address how the surviving Section 2(a) grounds are applied.

Are There Any Exceptions to Section 2(a) Refusals?

The most important development is not an exception but a change in the law itself: the disparagement and immoral-or-scandalous bars no longer exist as grounds for refusal. For the grounds that remain, an applicant can overcome a deceptiveness refusal by showing the mark does not materially misdescribe the goods, and can overcome a false-connection refusal by showing the mark does not point to another identifiable person or institution or that no connection would be assumed. Consent from a named party can also resolve a false-suggestion-of-a-connection concern.