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IP and Tech Law Alert: Trademark Rights and Free Speech at a Crossroads: U.S. Supreme Court to Decide Conflict

September 30, 2016

The Supreme Court will decide whether free speech rights trump a federal law that bars the registration of disparaging trademarks. Section 2(a) of the Lanham Act bars the Patent and Trademark Office (“USPTO”) from registering scandalous, immoral or disparaging marks. 15 U.S.C. § 1052(a). On September 29, 2016, the Court announced that it will consider whether part of the disparagement provision of the Lanham Act violates the First Amendment. Specifically, the Court granted the petition for writ of certiorari in Lee v. Tam, No. 15-1293, to address the following legal issue:

Whether the disparagement provision of the Lanham Act, 15 U.S.C. 1052(a), which provides that no trademark shall be refused registration on account of its nature unless, inter alia, it “[c]onsists of . . . matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” is facially invalid under the Free Speech Clause of the First Amendment.

The section at issue has been a part of the Lanham Act since it was enacted in 1946. For years, courts have consistently upheld and applied the disparagement provision. Courts have ruled that the provision does not violate free speech rights because it does not prohibit anyone from actually using the offending mark. Courts have also noted that the disparagement provision does not prevent the owner from enforcing common law trademark rights. 

However, these precedents were called into question this past year when the Federal Circuit sitting en banc declared section 2(a) of the Lanham Act unconstitutional. The case at issue concerns an Asian-American dance-rock band called the Slants. The trademark dispute began when the USPTO denied the “Slants” trademark registration because the name has been used to disparage people of Asian descent. The band, which is comprised of Asian members, contended that it did not intend to disparage anyone, but rather to adopt and reform a disparaging term about Asians, much as some gay people have embraced the term “queer.” The band first lost before a trial judge in Virginia, but the U.S. Court of Appeals for the Federal Circuit sided with the band last December, ruling that the government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks.   

The showdown between trademark rights and free speech is now headed to the highest court in the land and will have implications far beyond the issue of whether the Slants can receive a federal trademark registration for its name. The issue of whether the federal government can ban offensive trademarks has become a contentious topic in the wake of a federal court ruling to revoke the Washington Redskins’ registrations. The Supreme Court’s decision to address the issue will be the capstone of more than 20 years of litigation by Native American activists who maintain the Washington Redskins’ trademark is an ethnic slur. The activists won a USPTO ruling in 2014 revoking the Washington Redskins’ registrations. The Supreme Court’s eventual decision in Lee v. Tam likely will decide the ultimate fate of the Redskins’ trademark.