On September 29, the United States Supreme Court agreed to review a Federal Circuit ruling that denied protection to disparaging trademarks under Section 2(a), 15 U.S.C. §1052 of the Lanham Act. The Court will determine if the bar on registering disparaging trademarks is a violation of the First Amendment.
We recently wrote about a Portland-based, Asian-American rock band who tried to trademark their band name “The Slants” (Lee v. Tam, No. 15-1293). The United States Patent and Trademark Office (USPTO) denied the group’s trademark, citing the Lanham Act. The USPTO found the group’s name would disparage, among others, “institutions, beliefs or national symbols,” specifically, people of Asian descent. The group appealed the USPTO’s rejection, and the United States Court of Appeals for the Federal Circuit (CAFC) held that the failure to register The Slants’ trademark amounted to a violation of the First Amendment. Judge Kimberly A. Moore said even though the rejected trademarks “convey hurtful speech that harms members of oft-stigmatized communities,” the First Amendment “protects even hurtful speech.”
In a court brief, band leader Simon Tam said The Slants were ”following in the long tradition of ‘reappropriation,’ in which members of minority groups have reclaimed terms that were once directed at them as insults and turned them outward as badges of pride.” Despite winning the earlier court ruling, Tam said this case should be heard by the high Court as the issue is “undeniably important.”
The professional football team, the Washington Redskins, have also faced this same legal issue (Pro-Football, Inc. v. Blackhorse, No. 15-1874). In 2014, six federal trademark registrations for the Washington Redskins were canceled by the USPTO because the team’s name was deemed disparaging to Native Americans.
In response to the Supreme Court taking on the Lee v. Tam case, the Washington Redskins filed a “certiorari before judgment,” which would have allowed the Redskins to move directly to the high court to have their case heard along with The Slants’ case. Unfortunately, for the Redskins, the Supreme Court denied their rare petition because the lower Fourth Circuit has not yet ruled on the matter.
The Redskins case is set to be heard later this year, but the ruling of The Slants’ case, will likely have a significant impact on the outcome of the Redskins’ case.