scotus
19 December 2016Trademarks

INTA and EFF back The Slants in amicus briefs at SCOTUS

The International Trademark Association (INTA) and the Electronic Frontier Foundation (EFF) have backed The Slants in a trademark fight against the US Patent and Trademark Office (USPTO).

On Friday, December 16, the associations submitted amicus briefs in support of Simon Tam, the founder and bassist of US rock band The Slants.

The dispute began when The Slants applied to trademark their name, which is a slang word for Asian people.

In December last year, an en banc US Court of Appeals for the Federal Circuit ruled that a decision by the USPTO to deny the trademark violated the band’s First Amendment rights.

This decision overturned previous rulings from a USPTO examiner, the office’s Trademark Trial and Appeal Board and a three-judge Federal Circuit panel.

But, in April this year, the USPTO  filed a petition for a writ of certiorari, asking the court to provide guidance on whether disparaging terms can be registered as trademarks or whether refusing registration is a violation of First Amendment rights.

WIPR  reported in September that the Supreme Court would consider the dispute.

In its  brief, INTA said the case “covers a matter of great importance to the INTA membership” and that the Lanham Act must be consistently applied.

“In this instance, the ‘may disparage’ provision of section 2(a) of the Lanham Act has been inconsistently interpreted and applied,” INTA said in a  statement.

Trademarks that are likely to disparage people, institutions or beliefs are barred from registration under section 2(a) of the Lanham Act, under current laws.

The brief added that although the Federal Circuit had properly determined that trademark registrations are not government speech, it also concluded that the disparagement provision does not regulate commercial speech.

“INTA believes that trademarks are inherently commercial in nature and should be viewed as commercial speech. Therefore, laws affecting or restricting the use of trademarks should be subject to intermediate scrutiny, which is the standard for commercial speech,” said the association.

The EFF  brief discussed an “unusual but important question” of whether registered trademarks are government expression.

“According to the USPTO, trademark registration is a kind of Midas touch whereby the expressive content of the trademarks themselves becomes government expression,” said the EFF in a  statement.

But the foundation said it disagreed, adding that there was “more than a hint of absurdity” to the government’s position.

“There is no need to mischaracterise trademarks as government speech to create a system that appropriately balances the rights of mark owners and the public. We hope that the Supreme Court agrees,” it said.

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More on this story

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29 September 2016   The US Supreme Court has revealed that it will take up the In re Tam trademark dispute, a case centring on US rock band The Slants.
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17 November 2016   The complainant in the Blackhorse v Pro Football trademark case, which concerns the Washington Redskins, has filed an amicus brief in support of the US Patent and Trademark Office in its In re Tam dispute with rock band The Slants.