Many of you may have read or heard in the media that the Washington Redskins lost their trademark because "Redskins" was disparaging to native Americans. While in fact Washington's football team did not "lose" their trademark, their trademark registration was stripped because of a ruling by the Trademark Trial and Appeal Board (TTAB) holding that the mark violated the rule that trademarks which "consist of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage...institutions, beliefs...or bring them into contempt, or disrepute..." are not registerable. Many other trademarks deemed to be offensive and violative of this restriction have also been denied registration ("HAVE YOU HEARD SATAN IS A REPUBLICAN" and "DEMOCRATS SHOULD NOT BREED" are two of the many who have not earned a registration based on this proviso).
Yesterday, the entire court (11 justices en banc) of the United States Appeals Court for the Federal Circuit- which is the federal appellate court that hears appeals from the TTAB- ruled in a sweeping opinion that the provision is unconstitutional and violates the First Amendment's ban on the government regulating speech. At issue in In Re Tam, was the trademark THE SLANTS which was for a band made up of members of Asian decent. Ironically, the band intended the mark to be a type of social commentary intended to fight bigotry, not to promote bigotry. Nonetheless, the TTAB ruled the mark racially disparaging and denied registration. Today's much anticipated opinion now opens the door to the registration of likely even the most offensive trademarks (and yes Washington's football team will most likely be getting their trademark registration back). As we have described in other publications, the importance of a federal registration for trademarks can not be underestimated as it confers important rights including that the mark is presumed valid and offers the trademark holder the ability to make the mark essentially immune from attack after five years of registration. So this ruling is important to those that hope to register marks that may be perceived as offensive while taking away a significant weapon that has been used effectively by various special interest groups intent on blocking the proliferation of offensive commercial speech.
The sweeping nature of the opinion and the significant differing views at the Federal Circuit (the opinion includes a number of dissenting and concurring opinions) as well as the impact of deleting what has long been perceived as a type of gate keeper for registrations, suggests that the United States Supreme Court might yet have the final word on this issue. However, for now, get ready for a flood of offensive and inflammatory trademarks to be submitted for registration.
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