Making American Trademarks Great Again?

The Lanham Act, the U.S.’s federal trademark law, includes 15 U.S.C. Section 1052(a), which states: “No trademark … shall be refused registration … unless it … consists of … matter which may disparage.” So, the question arises, should the U.S. government be in a position to decide whether language is disparaging? Even if it is disparaging, should the U.S. government deny the benefits of federal registration to a trademark owner? For that matter, by refusing federal trademark registration on the basis of language, does Section 1052(a) violate the First Amendment right to freedom of speech?

Just recently, the U.S. Supreme Court heard arguments on this section as related to the cancellation of the Washington Redskins football franchise’s trademark, and the trademark “THE SLANTS” of an Asian rock group.

The Washington Redskins trademark dispute is a legal effort in connection with the Washington Redskins name controversy arising from efforts of those who consider the term “redskin” to be an offensive and disparaging racial slur to prevent the owners of the Washington Redskins football team from being able to assert federal trademark protection for this name. These efforts have primarily been carried forward in two cases brought before the U.S. Patent and Trademark Office (USPTO), and in lobbying efforts before the United States Congress relating to the trademarks at issue.

For more information on the Washington Redskins trademark dispute, see the following video: 

Both the USPTO and Pro-Football, Inc. have requested a review by the Supreme Court of the United States of the same legal issue, the constitutionality of banning a disparaging trademark.

The USPTO is appealing the decision by the U.S. Court of Appeals for the Federal Circuit which found in December 2015 that part of the Lanham Act is unconstitutional.  That case (In Re Tam) involves the denial of a trademark for an Asian-American rock band, “THE SLANTS”.

To review the Federal Circuit decision in In Re Tam, click here. 

The following video touches well some of the issues in the Federal Circuite review of In Re Tam and the U.S. Supreme Court Lee v. Tam

Given that case, Pro-Football, Inc. took the appeal of their trademark decision directly to the U.S. Supreme Court. Pro-Football, Inc. claims that their case is “a better vehicle” since they have a long history of using the name “Redskins” and have more to lose financially if trademark protection is not restored. However, the Court decided to take up only the Tam case, with a decision due in June 2017. While refusal to consider the appeal by Pro-Football, Inc. maintains the cancellation of the team’s trademarks, a decision in the Tam case that the relevant portion of the Lanham Act is unconstitutional would benefit the Redskins as well.

In Lee v. Tam, the Supreme Court will consider a request by Simon Tam, an activist and the founder of an Asian rock band, to register his band’s name, “THE SLANTS,” as a federally protected trademark. Tam contends that his band’s name challenges stigmatizing stereotypes, but the U.S. Patent and Trademark Office denied registration after finding THE SLANTS disparaging to people of Asian ancestry. To Tam, the result is unconstitutional viewpoint discrimination and suppression of speech – all the more harmful and arbitrary because of his record of political activism and advocacy on behalf of Asian-American groups.

On appeal to the Trademark Trial and Appeal Board (TTAB), Tam was again refused registration on the basis of disparagement. He took his case to the U.S. Court of Appeals for the Federal Circuit, which sided with TTAB and refused registration of the mark. But in an unusual sequence of events, the Federal Circuit reheard the case en banc and then sided with Tam. The USPTO filed a petition for writ of certiorari with the U.S. Supreme Court—which was granted. Oral argument took place on January 18, 2017.

During oral argument, Justice Stephen Breyer asked Stewart to explain the purpose or objective of the disparagement provision of Section 1052(a). Stewart responded that the function of a trademark is to tell the public the source of a good or service, and that while a trademark “is not expressive in its own right” it may convey other meanings (such as an advertisement or positive message) that can distract a consumer from a trademark’s source ­identification. “Congress says” remarked Stewart, that “as long as you are promoting your own product, saying nice things about people, we’ll put up with that level of distraction.”

But Breyer was skeptical: “I can think probably, and with my law clerks, [of] ­perhaps 50,000 examples of instances where the space the trademark provides is used for very distracting messages, probably as much or more so than … disparagement. And what business does Congress have picking out disparagement, but letting all the other distractions exist?”

Justice Elena Kagan was also critical of Section 1052(a). She remarked, “I always thought that government programs were subject to one extremely important constraint, which is that they can’t make distinctions based on viewpoint.” She then asserted that Section 1052(a) had made such impermissible distinctions: “The point is that I can say good things about something and receive a registration, but I can’t say bad things about something [because my registration will be refused. And I would have thought that that was a fairly classic case of viewpoint discrimination.”

The U.S. Supreme Court decision in Lee v. Tam is expected in June 2017.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.