What’s Left of Section 2(a) of the Lanham Act?

Section 2(a) of the Lanham Act lays out five grounds for refusal if it contains matter that is (1) immoral, (2) deceptive, or (3) scandalous, or (4) that may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or (5) is a geographical indication used for wines or spirits that identifies a place other than the origin of the goods and is first used after the WTO Agreement entered into force in the US.

The disparagement section was struck down on Constitutional grounds in Matal v. Tam, 582 U.S. __, 137 S.Ct. 1744, 198 L.Ed.2d 366 (2017); the immoral and scandalous sections came to the same end via Iancu v. Brunetti, No. 18–302, 588 U.S. ___ (2019). What remains? The prohibitions on deceptive marks, false suggestion, and geographic indications.

By far the most common type of 2(a) refusal now is for potentially deceptive marks, which have generated over 3,000 refusals in 2019. This refusal is often raised in the alternative to a 2(e)(1) refusal, and so is piggybacking on a much more common refusal a bit.

Immoral or scandalous marks each have around 300 refusals, largely suspension notices issued early in the year; these are starting to move forward to publication after the recent Brunetti decision. Most applications that received disparagement refusals have moved through to publication or registration or will do so shortly.

There were about 550 false suggestion refusals; about 1/5th of them have already gone abandoned, and a roughly equal number have moved through to publication or registration. These refusals appear to be especially common in the fashion space.

Finally, geographic indication-based refusals were extremely rare; there were only a handful and 2/3 have already moved through to publication or registration.

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