Intellectual Property Law Blog

Trademarks Update: Supreme Court to Decide Constitutionality of Disparagement Provision

October 20th, 2016

Trademarks Update Supreme Court to Decide Constitutionality of Disparagement Provision

By Patricia S. Rogowski, Esq.

The U.S. Supreme Court is poised to answer a question that has plagued federal trademark law for decades: Does the government have the right to refuse to register trademarks which it has deemed “disparaging?” And, given that the First Amendment prohibits our government from restricting speech, does it make sense to have the U.S. Trademark Office approve or deny trademark registrations on grounds that may limit speech?

In September 2016, the U.S. Supreme Court agreed to review Lee v. Tam, a case about which we have written previously. Specifically, the Court of Appeals for the Federal Circuit held that refusing to register trademarks that “may disparage” people or groups of people is an unconstitutional restraint on private speech.

Lee v. Tam centers on an Oregon-based rock band called “The Slants.” The band’s Asian-American members applied to register THE SLANTS as a trademark, but the U.S. Trademark Office refused to register on the grounds that “Slants” is derogatory and disparaged Asian Americans.

Section 2(a) of the Lanham Act, the 1946 statute that governs trademarks, permits Trademark Examining Attorneys to deny registration to any trademark that “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

The band argued that they used “Slants” expressively, intentionally as a play on their own ethnicity in an effort to co-opt and subvert the offensive meaning of the word sometimes used to denigrate Asian people. They themselves did not intend to disparage others of Asian ethnicity. Thus, they contended that they had sufficiently detoured around Section 2(a) concerns. The Trademark Trial and Appeal Board (TTAB) did not agree, and affirmed the refusal to register. The band appealed, and the Federal Circuit first affirmed the rejection but, in an unusual separate opinion, called for an en banc hearing to review the constitutionality of the disparagement provision of the Lanham Act. Sitting en banc, in December 2015, the Federal Circuit held that the disparagement prohibition was unconstitutional.

On behalf of the government, USPTO Director Michelle K. Lee filed a petition for certiorari in April 2016, and the Supreme Court just granted that petition on Sept. 29, 2016.

Lee v. Tam may have implications for another high-profile trademark dispute where the Trademark Office canceled the Washington Redskins trademarks also under Section 2(a) of the Lanham Act, Pro-Football Inc. v. Blackhorse. Although the Washington Redskins’ team’s attempt to join the Tam case as a party was denied, the team has filed an amicus brief supporting the band.

We applaud Tam for pursuing review of the original refusal, leading to the en banc Federal Circuit opinion, and now Supreme Court review. In Lee v. Tam, the Supreme Court may reshape U.S. trademark law significantly. Given that sensibilities as to what may be offensive or disparaging can and do change with the times, we think it is appropriate for this particular section of the 1946 Lanham Act to be highly scrutinized in light of modern norms. We have experienced, through efforts to register trademarks that contain impolite words like “BITCH,” the difficulty of navigating the shifting and highly subjective line insofar as what the Trademark Office may deem “disparaging” (or “immoral, deceptive, or scandalous”). Our clients will benefit if this particular statutory roadblock is removed. The trademark attorneys at Panitch Schwarze will continue to keep a close eye on this case as it progresses.

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