SCOTUS to review Slants, but not Redskins, case
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.
The justices announced today, September 29, that they will consider the case.
It means the court will provide guidance on whether disparaging terms can be registered as trademarks or whether refusing registration is a violation of First Amendment rights.
Under current laws, trademarks that are likely to disparage people, institutions or beliefs are barred from registration under section 2(a) of the Lanham Act.
In December last year, an en banc US Court of Appeals for the Federal Circuit ruled that a decision by the US Patent and Trademark Office (USPTO) to deny The Slants a trademark for its name violated its First Amendment rights.
The Supreme Court did not take the case Blackhorse v Pro Football, which concerns the Washington Redskins’ trademarks for the term ‘Redskins’, a slang word for Native American people.
However, it’s likely that In re Tam will have direct implications on the Blackhorse case.
In 2014, six trademarks owned by the Washington Redskins were cancelled by the USPTO after they were challenged by a group of Native Americans led by Amanda Blackhorse.
The court’s new term begins on October 3.
Ronald Coleman, partner at Archer & Greiner and one of the attorneys acting on behalf of The Slants, told WIPR that "we have had a number of congratulatory emails" and that "we are getting the congratulations because people are assuming that we’re on the way to some glorious outcome.
"I certainly hope that we are but at the end of the day we won the last round and what this grant of certiorari really means to us is the opportunity and challenge of vindicating the Federal Circuit’s decision," he added.
On how the attorneys are preparing for the case, Coleman said that "we have obviously quite a bit of moot court preparation coming up, and certainly in terms of preparing our brief based on our government’s response to our certiorari petition, you can deduce that this part may be a little bit different from the last round but a lot of the research has been done".
The main issue for the case, he said, is that "the First Amendment issue that was framed by the Federal Circuit is still front and centre".
"Another subset of that issue is whether or not the registration of a trademark is in and of itself so-called ‘government speech’, whether it affects private speech, whether trademarks are commercial speech or not, and which of those are issues that are all implicated by the Federal Circuit’s decision and not necessarily all issues that we believe have to be addressed again.
"Any one of them may be of interest to the court, so we have to be prepared to answer those questions, however they might come up," he added.
Howard Hogan, partner at Gibson & Dunn, said: "Although interesting, the case is likely to have only limited direct impact on most trademark owners. The vast majority of trademarks in use are not likely to be considered scandalous or offensive."
He added that "in a nutshell, the Supreme Court is being asked to resolve the question of whether trademark registration should be considered more like a substantive right for anyone with a source indicator that otherwise meets the criteria for registration, or more like a license plate on an automobile, where the Court has previously held that governments can set limits on a user’s options."
Hogan explained that whatever the decision, it is likely to open the USPTO and possibly the courts to new filings, either to "register marks that might have been previously rejected as offensive, or else to challenge existing or future marks that certain segments of the public might consider to be offensive".
