The Supreme Court will decide this term upon the constitutionality of the disparagement provision of the Lanham Trademark Act, after it granted certiorari last week in the case of Lee v. Tam.
The disparagement provision of the Lanham Act, 15 U.S.C.S. §1052(a), prevents the registration of “scandalous, immoral or disparaging” marks, specifically those that “a substantial composite of the referenced group” perceive as disparaging. Under §1052(a), the Patent and Trademark Office rejected musician Simon Shiao Tam’s application for trademark of his band’s name, THE SLANTS, on the ground that the name was racially pejorative. Tam argues that the denial of his trademark is a violation of his first amendment rights. The Court of Appeals for the Federal Circuit agreed, vacating the Trademark Trial and Appeal Board’s decision that “THE SLANTS” was unrecognizable under the Lanham Act. The Federal Circuit found that the law denies legal rights to trademark owners and the denial view is viewpoint-based, dependent on the opinions of the referenced group.
If the Supreme Court upholds the Federal Circuit’s holding, the rejection of §1052(a) could affect the outcome of other cases. One case, Pro-Football, Inc., v. Blackhorse, which involves the use of the name “Redskins” as the trademarked name for Washington state’s National Football League team, lay on the same Lanham Act challenges as Lee. However, Pro Football was denied certiorari on October 3.
Eugene Volokh, Supreme Court will hear ‘Slants’ trademark case, which is directly relevant to the Redskins Controversy, Washington Post (last visited Oct. 5 5:40 p.m.) https://www.washingtonpost.com/news/volokh-conspiracy/wp/2016/09/29/supreme-court-will-hear-slants-trademark-case-which-is-directly-relevant-to-the-redskins-controversy/?utm_term=.42bbf3756fad
Elizabeth A. Patton, SCOTUS Will Not Hear Redskins’ Trademark Dispute, Fox Rothschild, (last visited Oct. 5, 2016, 4:24 p.m.), https://advertisinglaw.foxrothschild.com/2016/10/scotus-will-not-hear-redskins-trademark-dispute/
Lanham Act, 15 U.S.C.S. §1052(a) 1946
In re Tam, 808 F.3d 1321, 1336 (Fed. Cir. 2015).