SCOTUS to Consider Ban on Disparaging Trademarks in Lee v Tam
On September 29, 2016, the U.S. Supreme Court added nine cases to its docket. Lee v Tam, which challenges the federal ban on disparaging trademarks, has the potential to be a blockbuster. The Court’s decision could also have serious implications for the Washington Redskins’ legal battle to preserve their team’s trademarks, which Native Americans have alleged are disparaging.
The Slants’ Trademark Dispute
Under the Lanham Act, the U.S. Patent and Trademark Office (USPTO) may refuse to register a trademark that “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” Existing precedent defines a “disparaging mark” as one that “dishonors by comparison with what is inferior, slights, deprecates, degrades, or affects or injures by unjust comparison.”
Background of Lee v Tam
The current legal dispute began when Simon Shiao Tam sought to register the mark “The Slants,” which is the name of his American-Asian dance band. In support of the registration, Tam stated: “We want to take on these stereotypes that people have about us, like the slanted eyes, and own them. We’re very proud of being Asian – we’re not going to hide that fact.” Nevertheless, the examining attorney refused registration, concluding that the mark was disparaging to people of Asian descent.
Tam challenged the denial, arguing that the Lanham Act’s prohibition of disparaging marks was unconstitutional under the First Amendment. The Trademark Trial and Appeal Board upheld the denial. However, Tam won a key victory last year, when the U.S. Court of Appeals for the Federal Circuit struck down the provision.
“Whatever our personal feelings about the mark at issue here, or other disparaging marks, the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others,” Judge Kimberly Moore wrote on behalf of the majority. As she further noted in the court’s opinion, the Constitution protects free speech “even when speech inflicts great pain.”
The First Amendment Issues Before the Court
The federal government challenged the Federal Circuit’s decision, arguing that the USPTO’s refusal to register a trademark does not prevent its use. Accordingly, the government maintains that First Amendment rights therefore are not “abridged by the refusal to register his mark.”
The Supreme Court granted certiorari in Lee v Tam. The justices will consider the following question: “Whether the disparagement provision in 15 U.S.C. 1052(a) is facially invalid under the Free Speech Clause of the First Amendment.” Oral arguments will likely take place this winter, and the Court will render its decision by June 2017. Please stay tuned for updates.
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Preamble to the Bill of Rights
Congress of the United States begun and held at the City of New-York, on Wednesday the fourth of March, one thousand seven hundred and eighty nine.
THE Conventions of a number of the States, having at the time of their adopting the Constitution, expressed a desire, in order to prevent misconstruction or abuse of its powers, that further declaratory and restrictive clauses should be added: And as extending the ground of public confidence in the Government, will best ensure the beneficent ends of its institution.