The Supreme Court agreed on September 29 to consider whether a provision of the Lanham Act that allows the USPTO to refuse to register “disparaging” trademarks violates the constitutional right to free speech. The case is Lee v. Tam (Docket No. 15-1293).
Tam concerns a rock band called “The Slants” founded in 2006 in Portland, Oregon by Simon Tam. Like the band’s music, the name is an exercise in social commentary: Tam’s goal was to reappropriate a derogatory term for people of Asian descent. In 2011, Tam tried to register “The Slants” as a trademark. The PTO refused, calling the name “disparaging” within the meaning of 15 U.S.C. section 1052(a). The PTO has made a number of similar calls of late; for example, it refused to register the mark “Stop the Islamization of America” on the grounds that it is disparaging to Muslims.
A divided en banc panel of the Federal Circuit Court of Appeals held section 1052(a) facially invalid in December 2015. The Federal Circuit ruled that it necessarily violates the First Amendment right to free speech to reject a mark based on disapproval of its content. In that Court’s words, “the First Amendment protects even hurtful speech.” The PTO petitioned for a writ of certiorari in April, which the Supreme Court granted on September 29. No date has been set for oral argument.
Tam and his band are not the only litigants currently trying to invalidate section 1052(a). In a case currently pending before the Fourth Circuit, the NFL’s Washington Redskins team is challenging the PTO’s decision to revoke the team’s trademarks in various iterations of its name on the grounds that the marks were disparaging to Native Americans when registered between 1967 and 1990. The team filed an amicus brief urging the Court to hear its case alongside Tam’s without waiting for the Fourth Circuit to rule; the Court declined, so for now the ’Skins will be forced to watch from the sideline.