United States: Supreme Court To Consider First Amendment Challenge To Lanham Act's Bar On Disparaging Marks

On September 29, 2016, the U.S. Supreme Court granted certiorari in a case involving the constitutionality of Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), which bars the federal registration of disparaging trademarks. The provision has been the source of controversy due to two high-profile lawsuits, involving a musical group of Asian-American musicians named "THE SLANTS," and the Washington Redskins professional football team. The case may have far-reaching impacts on the status of controversial trademarks under federal law. Lee v. Simon Shiao Tam, No. 15-1293 (U.S. 2016).

Background:

Section 2(a) of the Lanham Act provides that the U.S. Patent and Trademark Office may refuse to register a mark (or cancel a mark that has been placed on the principal register) if it "Consists of or comprises . . . matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute." In the Tam case, the USPTO rejected an application to register "THE SLANTS" for a musical group. Applicant Tam argued that the band was engaging in a well-established phenomenon of "reappropriation," in which members of minority groups "take ownership" of messages that once were slurs, and use them as badges of pride. Tam challenged the USPTO's refusal to register the mark on the grounds that the use of the term was protected by the First Amendment, and the USPTO's refusal to afford the benefits of registration was an abridgement of free speech.

The U.S. Court of Appeals ruled for Tam, and ruled that Section 2(a) was invalid. In re Tam, 808 F.3d 1321 (Fed. Cir. 2015) (en banc). The court noted that:

Section 2(a) is a viewpoint discriminatory regulation of speech, created and applied in order to stifle the use of certain disfavored messages. Strict scrutiny therefore governs its First Amendment assessment—and no argument has been made that the measure survives such scrutiny.

Practical Significance:

The Tam case is likely to affect the outcome of a separate case, Pro-Football, Inc. v. Blackhorse, now pending before the U.S. Court of Appeals for the Fourth Circuit. In that case, the USPTO cancelled the registration for marks relating to the Washington Redskins football team on the grounds that they are disparaging to segments of the Native American population. On October 3, 2016, the Supreme Court rejected a petition by Pro-Football, Inc. to have the dispute heard concurrently with the Tam case.

The Tam case will require the Court to apply a series of recent cases involving government activities to the trademark registration process. For example, in Walker v. Texas Division, Sons of Confederate Veterans, Inc., 135 S. Ct. 2239 (2015), the Court ruled that a state license plate bureau's rejection of a proposed specialty vehicle plate bearing the Confederate battle flag did not violate the First Amendment, largely because the plate was consider government speech, not expression by a member of the public. The parties in Tam disagree on whether the USPTO's registration of a trademark likewise is government speech, or whether it is entitled to protection under the First Amendment.

The outcome of the Tam case also may affect other prohibitions in Section 2(a). If the prohibition on disparaging marks is stuck down, the same reasoning may apply to the Lanham Act's bar on the registration of "scandalous" and "immoral" marks. In addition, although trademarks generally are enforceable under the Lanham Act even if they are not federally registered, the case may affect the enforceability of unregistered disparaging marks.

The Supreme Court has not yet scheduled the Tam case for argument.

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