September 30, 2016

Supreme Court to Hear “Offensive” Trademark Case

by Guest Blogger

Fall is finally here and football season is well underway. It appears that the clash between free speech and trademark protection is headed to the Super Bowl, but it won't be the Washington Redskins on the field.

The Washington Redskins are still using their same mascots and images despite a court ruling canceling several trademark registrations on the basis that the term REDSKINS is disparaging to Native Americans. The team has an appeal pending at the Fourth Circuit Court of Appeals but pulled a Hail Mary by asking the Supreme Court to leapfrog the Fourth Circuit and review its case (read our prior blog post "Monday Night Football"). The Supremes declined to hear the Washington Redskins' case out of turn but will hear another case that could have an impact – Lee v. Tam, a case deciding whether an Asian American rock band called THE SLANTS should be permitted to register their band name. The Slants chose their name to reclaim the term and pay tribute to their Asian heritage since they tout themselves as the only all Asian-American rock dance band in the world.

The Slants case challenges the constitutionality of the portion of the trademark law (the "Lanham Act") that prohibits the registration of marks that are disparaging, which is the same provision under which the REDSKINS registrations were canceled. The U.S. Patent and Trademark Office refused registration of the mark THE SLANTS, finding it disparaging to Asian Americans (read our prior blog post "Disparagement, Political Correctness, and the First Amendment"). On appeal, the Federal Circuit invalidated the anti-disparagement clause of the Lanham Act as an unconstitutional violation of the free speech guarantees of the First Amendment. Key issues were whether the test for what rose to the level of an unregistrable disparaging mark was vague and whether it restricted speech. Registration is a separate benefit and does not necessarily determine a party's right to use a mark.

What do you think? Should marks that are offensive to a large number of people be permitted to be federally registered at the United States Patent and Trademark Office?