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17 November 2016Trademarks

The Slants: Redskins complainant files brief in support of USPTO

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 (USPTO) in its In re Tam dispute with rock band The Slants.

The brief (via the TTABlog) was filed by Jesse Witten and Adam Yoffie of law firm Drinker Biddle & Reath at the US Supreme Court on Tuesday, November 15, for Amanda Blackhorse.

WIPR reported in October that the Supreme Court would consider the In re Tam dispute.

The court is due to provide guidance on whether disparaging terms can be registered as trademarks or whether refusing registration is a violation of First Amendment rights.

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.

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

The decision overturned previous rulings from a USPTO examiner, the office’s Trademark Trial and Appeal Board and a three-judge federal circuit panel.

In April this year, the USPTO filed a writ of certiorari asking the Supreme Court whether the disparagement provision in the Lanham Act is “facially invalid under the free speech of the First Amendment”.

In the Blackhorse case, the USPTO cancelled six trademarks owned by the Washington Redskins in 2014 after they were challenged by a group of Native Americans led by Blackhorse.

Her amicus briefin the In re Tam case argued that the disparagement provision doesn’t violate the First Amendment, that Tam’s First Amendment rights were not affected and that a refusal to register a mark may affect the owner’s ability to enjoin others from speaking, but the “right to silence others” is not a First Amendment right.

“The First Amendment does not compel the government to issue registration certificates for such marks or publish those marks on its principal register,” the brief said.

Witten and Yoffie added that “the Lanham Act and USPTO regulations create a transparent and fair process for evaluating registration applications”.

The lawyers asked the Supreme Court to reverse the judgment of the Federal Circuit.

The USPTO told WIPR that it does not comment on cases.

Ronald Coleman, partner at Archer & Greiner, and one of the lawyers acting on behalf of The Slants, told WIPR that he is going to be making a formal submission in court.

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More on this story

Trademarks
6 December 2016   The US Supreme Court will hear oral arguments in the In re Tam trademark dispute, which centres on rock band The Slants, on January 18, 2017.
Trademarks
19 December 2016   The International Trademark Association and the Electronic Frontier Foundation have backed The Slants in a trademark fight against the US Patent and Trademark Office.
Trademarks
19 January 2017   The US Supreme Court yesterday heard oral arguments in the Lee v Tam trademark dispute, which centres on rock band The Slants, but lawyers have told WIPR that while the court pressed both sides, it provided “scant” insight into its position on the case.