© 2016 The Texas Lawbook.
By Amanda Greenspon of Munck Wilson
(Oct. 11) – The trademark legal battle being fought by the Asian-American band named “The Slants” has entered a new arena. The U.S. Supreme Court has agreed to hear The Slants case and make a decision that will answer the question: does the government have the right to reject registration of disparaging trademarks?
The Slants were denied and the Redskins lost trademark registrations at the U.S. Patent and Trademark Office on the grounds that the marks were considered disparaging of a “substantial composite of the referenced group” – typically a racial minority – by that group’s members at the time of application. Both the Redskins and The Slants appealed the USPTO decision on the grounds that the decision to reject the registration of trademarks on the basis of the content of the mark violates the First Amendment.
The Slants won a key ruling in 2015, when a federal appeals court invalidated a provision in the 70-year-old Lanham Act that prohibited the registration of disparaging trademarks citing the First Amendment. The court said the government could not deny trademark registration where the denial is “viewpoint based” to marks on the basis that they are offensive.
The Redskins faced cancellation of their trademark registrations in 2014 under the same provision of the Lanham Act. In that proceeding, brought at the U.S Patent and Trademark Office by Native Americans, the plaintiffs demonstrated that at the time of registration the term “redskins” disparaged Native Americans. The ruling against the Redskins brought new scrutiny to the rule but, the team lost their First Amendment fight last summer when a federal judge ruled that Section 2(a) of the Lanham Act did not violate the First Amendment.
In June, The Slants asked the Supreme Court to review the band’s victory, citing the Redskin’s case, which is still in lower appeals court. The band leader wants a final ruling from the U.S. Supreme Court to avoid any future issues with substantially similar cases in other jurisdictions being decided differently. The Redskins asked to join The Slants in this appeal but the Supreme Court declined.
At stake in this case is whether a trademark is “speech” as that term is contemplated in the First Amendment jurisprudence and if so, does the refusal to register that trademark with the U.S. government constitute the banning of speech under the First Amendment?
If the answer is yes to both, Section 2(a) of the Lanham Act may not survive. If the answer is no, the band and the team can continue using the offensive terms as trademarks but will not be provided the protection offered by a federal trademark registration.
The Obama administration sought high-court review of The Slants case, saying in part that the appeal-court ruling upended longstanding practices at the USPTO. If the lower-court ruling stands, the government will have no power to refuse disparaging trademarks.
Oral arguments will likely take place in December 2016 with an expected Supreme Court decision by June 2017.
Amanda Greenspon is an attorney in Munck Wilson Mandala’s Intellectual Property section. She works with companies on all aspects of their trademark and copyright portfolios. This includes branding and licensing as well as prosecution and enforcement actions at the Trademark Trial and Appeal Board and in the federal courts. Greenspon’s clients include companies in the technology, financial services, hospitality, consumer packaged goods, and fashion industries.
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