Q: The U.S. Supreme Court recently held that a trademark for a clothing brand, which sounded like an expletive — though spelled differently — cannot be denied on the grounds it is “immoral” or “scandalous,” because that violates free speech under the First Amendment. Is there any limitation then as to what names can now be trademarked?

-E.C., Palos Verdes Estates

A: The case you reference, Inacu v. Brunetti, was actually preceded in 2017 by the court’s ruling in Matal v. Tam. There, members of an Asian-American rock band named The Slants were successful in arguing that the disparagement clause of the Lanham Act (the law applicable to trademarks) should be struck down in light of its conflict with the First Amendment’s freedom of speech clause. Still, with these two rulings, each trademark application has to be evaluated on its own merits. There is no blanket approval to trademark so-called suggestive or offensive words or expressions. There are other grounds on which a trademark application could be rejected, such as if it is generic or merely descriptive, will cause undue confusion, is a surname, misappropriates a person’s identity, or is a government insignia. To be sure, however, the decision you reference shows that our Supreme Court values freedom of speech as a very fundamental right.

Q: We have a great trade name for our product, but are not ready yet to start marketing and shipping. Our concern is if we do not secure or somehow reserve that name now, it may get taken by one of our competitors. Is there any guidance here?

-W.G., City of Industry

A: You can file a trademark application described as “Intent to Use.” This means there is a bona fide, good faith intention to utilize that name you trademark, but that the item with which it is associated is not yet in the stream of commerce. You have five extensions you can seek from approval initially of your trademark application —  over the course of successive six months — thus a total of three years to get that item into commerce. When you do, then you modify the intent to use application to actual use. Forms are available for your purposes on the website of the United States Trademark Office.

Trademark Basics

Online at the website of the United States Trademark Office, USPTO.gov, you can find helpful information on trademark basics. There also are links for the forms to file a trademark, and a link to search for trademarks as well. When the site opens, click “Trademarks” at the top.Note that assistance from qualified counsel or a company that assists with trademark applications is prudent, since issues may arise with any particular application.

Ron Sokol is a Manhattan Beach attorney with more than 35 years of experience. His column, which appears in print on Wednesdays, presents a summary of the law and should not be construed as legal advice. Email questions and comments to him at RonSEsq@aol.com or write to him at Ask the Lawyer, Daily Breeze, 400 Continental Blvd, Suite 600, El Segundo, CA 90245.