IP Law Daily Supreme Court agrees to hear ‘Slants’ trademark disparagement case
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Thursday, September 29, 2016

Supreme Court agrees to hear ‘Slants’ trademark disparagement case

By Cheryl Beise, J.D.

The U.S. Supreme Court yesterday granted a petition filed by the U.S. government on behalf of USPTO Director Michelle K. Lee requesting review of a Federal Circuit decision holding that the Lanham Act provision prohibiting registration of "disparaging" trademarks violates the Free Speech Clause of the First Amendment. The appeals court reversed the agency’s decision to deny Simon Shiao Tam’s application to register the mark THE SLANTS as the name of his Asian-American rock band on the ground that mark was likely to be offensive to Americans of Asian descent in violation of Section 2(a) of the Trademark Act. The Federal Circuit’s decision has generate much controversy and could have broader implications on the agency’s ability to deny registration of other marks, such as those considered to be scandalous or vulgar.

Tam applied for registration of the mark THE SLANTS, in standard character form, for use for "entertainment in the nature of live performances by a musical band." The trademark examining attorney refused to register the mark on the ground that it was likely disparaging to a substantial composite of people of Asian descent, and in a precedential decision, the Trademark Trial and Appeal Board affirmed the refusal. Section 2(a) of the Trademark Act prohibits the USPTO from registering a trademark that consists of matter that may disparage or bring into contempt or disrepute persons, institutions, beliefs, or national symbols. Tam appealed to the Federal Circuit.

On April 20, 2015, a three-judge panel of the court affirmed the Board’s decision. However, one week later the Federal Circuit held a sua sponte hearing en banc, vacated the panel decision, and reinstated the appeal for further briefing on the question of whether the Lanham Act’s bar on registration of disparaging marks violated the First Amendment. On December 22, 2015, in a 9-3 decision, the en banc court held that the government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks or because it finds that such marks would be disparaging to others. The Federal Circuit concluded that under the strict scrutiny review appropriate for government regulation of a message or viewpoint, the disparagement proscription of Section 2(a) was unconstitutional on its face.

The government’s petition in Lee v. Tam, Docket No. 15-1293, asks "whether the disparagement provision in 15 U.S.C. §1052(a) is facially invalid under the Free Speech Clause of the First Amendment."

Pro-Football, Inc.—the owner of six REDSKINS trademark registrations that were cancelled by the USPTO because they were deemed to be disparaging to Native Americans—also has petitioned the Supreme Court to decide the constitutionality of the Lanham Act’s prohibition on registering disparaging marks. The federal district court in Alexandria, Virginia, affirmed the TTAB’s decision to cancel the marks. Although Pro-Football’s appeal is currently pending before U.S. Court of Appeals in Richmond, Pro-Football is asking the Supreme Court to grant its petition as a companion case to In re Tam inorder to reach a broader range of constitutional challenges to Section 2(a) and avoid piecemeal review. The Court has not yet acted on the Pro-Football petition (Pro-Football, Inc. v. Blackhorse, Dkt. No. 15-1311).

Another case currently on appeal to Federal Circuit addresses whether the First Amendment bars the registration of "scandalousness" marks (In re Brunetti, No. 2015-1109). In Brunetti, the Trademark Trial and Appeal Board affirmed the refusal to register the mark FUCT in connection with a line of "streetwear" apparel on the ground that the mark was a "vulgar" term that was precluded from registration pursuant to Section 2(a) of the Lanham Act. The Department of Justice submitted a letter brief to the Federal Circuit in January, opining that the reasoning in the Tam decision also applied to marks deemed "scandalous" or "immoral." In the DOJ’s view, given the breadth of the Tam decision, there was no reasonable basis for treating the statutory provisions differently.

Until the First Amendment challenges to Section 2(a) are resolved by the courts, USPTO has issued an Exam Guide indicating that it will issue only advisory refusals on these grounds. The USPTO will be suspending action on pending applications involving marks subject to refusal on disparagement or scandalousness grounds.

The case is Docket No. 15-1293.

Attorneys: Ian Heath Gershengorn, Acting Solicitor General, U.S. Department of Justice, for Michelle K. Lee, Director, USPTO. John C. Connell (Archer & Greiner, P.C.) for Simon Shiao Tam.

MainStory: TopStory Trademark USPTO

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