The United States Supreme Court, on September 29, 2016, granted certiorari in a case involving petitioner Simon Tam, his band, The Slants, and the band’s attempt to register their band name as a trademark. Commentators believe this case will resolve the question of whether the Lanham Act’s prohibition on the registration of disparaging or offensive trademarks (Section 2a) violates the First Amendment.
The Slants have contested the federal ban’s constitutionality ever since the United States Patent and Trademark Office (“USPTO”) denied the band name trademark registration based on a conclusion that the proposed mark was offensive to Asian-Americans. But, sitting en banc, the Federal Circuit overturned the USPTO’s decision, concluding the First Amendment’s free speech protections extend to hurtful speech too—here, disparaging trademarks—not just that speech for which the government approves.
This case’s outcome could impact the 2014 USPTO decision that revoked trademark registrations belonging to the National Football League’s Washington Redskins, whose marks have been the subject of protracted litigation and publicly criticized as amounting to an offensive ethnic slur.
On Monday, October 3, however, the Supreme Court refused Washington’s attempt to involve itself in Tam’s case, denying the team’s rare request for certiorari before judgment. If granted, the move would have put Washington’s case in front of the Supreme Court prior to the Court of Appeals rendering its decision on the issue. With the Supreme Court’s denial, Washington is left to litigate from the stands as amicus curiae.
Takeaway: Advertisers and their agencies should keep tabs on this case. Its outcome may significantly alter the perimeters set for the types of marks that are eligible for federal registration. When published, Adlawbyrequest will do a breakdown of the potential groundbreaking decision. Stay tuned.