The U.S. Supreme Court announced today that it will review whether the U.S. Trademark Office can deny registration of offensive trademarks or whether such prohibition violates the First Amendment. The dispute affects the constitutionality of Section 2(a) of the Lanham Act, which prohibits registration of such marks. The case originated in 2013 following the Office’s refusal to register THE SLANTS as a mark for an Oregon rock band on grounds that it was a derogatory slang phrase for people of Asian descent. Since its enactment 70 years ago, the Lanham Act has prohibited the registration of any mark that may “disparage” a person. The full panel of the Federal Circuit declared this provision unconstitutional in December 2015 in a decision that spawned five opinions. That Court’s majority opinion recognized that although many of the marks banned under the statute as disparaging “convey hurtful speech that harms members of oft-stigmatized communities, … the First Amendment protects even hurtful speech.” The opinion concluded that “[t]he government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks” and struck down the ban. The Supreme Court will directly address the constitutionality of banning the registration of “disparaging” marks.
The Supreme Court has not yet taken any action in the higher profile dispute over the Washington REDSKINS trademark, which is also at issue under the same Section 2(a) provision. Although the Redskins case is still pending before the Fourth Circuit, the football team is seeking to skip this intermediate appeal and join its case with the SLANTS case before the Supreme Court given the analogous legal arguments between the two cases.
We will continue to follow the cases as briefing continues throughout the fall. Stay tuned for further updates.
Previous Mintz coverage of the SLANTS and REDSKINS trademark cases can be found here:
- Washington Redskins Haven’t Won Yet: Why the Constitutionality of Section 2(a) is Not Yet Final (January 6, 2016)
- Federal Circuit Rules Federal Trademark Statute Ban on Disparaging Marks to Be Unconstitutional (December 22, 2015)
- A Scandalous Mark to Some, Free Speech to Others: Federal Circuit to Decide Whether Controversial Limit on Trademark Registrations Violates First Amendment (May 4, 2015)
- The US Department of Justice Seeks to Intervene in the Washington Redskins’ Trademark Suit to Defend the Constitutionality of the Lanham Act (January 13, 2015)
- Washington Redskins Challenge the Constitutionality of Section 2(a) of the Lanham Act (August 27, 2014)
- Let’s Set the Record Straight….the Redskins Still Own the REDSKINS Trademarks
- “REDSKINS” US Trademark Registrations are Canceled for Disparaging Native Americans (June 18, 2014)
- TTAB Refuses to Register “The Slants,” Finding it to be “Disparaging” (October 25, 2013)