30 September 2016Trademarks

SCOTUS Slants decision could change 70 years of practice, say lawyers

The US Supreme Court decided yesterday that it will take up the In re Tam trademark dispute involving US rock band The Slants.

Lawyers have told WIPR that if SCOTUS agrees with the US Court of Appeals for the Federal Circuit, “it will mean a change to 70 years of trademark office practice”.

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 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 band’s founder and bassist is called Simon Tam.

WIPR spoke to US trademark lawyers about why the Supreme Court chose to review the In re Tam case but not Blackhorse v Pro Football, a similar 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.

Monica Riva Talley, director at law firm Sterne, Kessler, Goldstein & Fox, said: “The decision to hear The Slants case (In re Tam) at this time was procedural. The USPTO filed a writ of certiorari to appeal the Federal Circuit decision in the In re Tam case, and the US Supreme Court granted certiorari.”

The Redskins’ case is still pending before the US Court of Appeals for the Fourth Circuit, and is on the schedule to be argued in December.

The Redksins had requested that they be allowed to skip the Fourth Circuit and join the In re Tam proceeding before the Supreme Court, but the court has not yet ruled on that request, Riva Talley explained.

On the next steps, Talley said that “we are still in the ‘wait and see’ mode” and that it will be interesting to see whether the Supreme Court allows the Redskins to join the In re Tam proceeding”.

In re Tam is a case of extreme interest to both the Redskins and the USPTO. If the Supreme Court agrees with the Federal Circuit, it will mean a change to 70 years of USPTO practice, she added.

John O’Quinn, partner at Kirkland & Ellis, told WIPR: “Unlike In re Tam, the Redskins case hasn’t been reviewed by a Court of Appeals yet.

“The Redskins petitioners asked the court to skip that step and grant ‘certiorari before judgment’, which very rarely happens. The constitutional question was presented in the In re Tam case so there was no obvious reason to also grant it in another case.”

Roberta Jacobs-Meadway, member at Eckert Seamans, added that “SCOTUS could take the position that the Redskins case is not yet ripe for review”.

She said that “assuming the decision of the Court of Appeals is reversed and the section is upheld as not unconstitutional, brand owners are back to the situation before that decision, with the USPTO deciding what is/is not disparaging.

“There is also an open question as to whether such marks will be subject to any protection under the Lanham Act section 43(a) or 43(c).”

It’s more likely that the decision is affirmed, according to Jacobs-Meadway. This would mean that brand owners will be able to register or apply to register marks they are using or intend to use, whether or not those marks might be deemed to disparage some group.

“The broader implication is that the USPTO may be constrained from refusing to register marks on the grounds that they are ‘vulgar’ based on the designation of the term as ‘vulgar’ in a dictionary, irrespective of the common use of the term by the public and in the media,” she added.

Andrea Calvaruso, partner at Kelley Drye & Warren, told WIPR: “The SCOTUS decision will determine whether the USPTO may continue to deny federal trademark registration of any mark on the basis that a substantial composite of the general public would perceive the mark to be vulgar, scandalous or offensive.

“Trademark rights in the US are derived from use of a mark in commerce, rather than registration.  Therefore, even if a party such as  Tam is denied a US trademark registration, it does not affect his right to use the mark as a brand name or trademark.”

Michael Kelber, partner in Neal Gerber & Eisenberg, added that it was exciting to see the Supreme Court weigh in on a First Amendment issue that is central to trademark rights.

“While The Slants band may not be household names, the fame of the Redskins—and the strong feelings on both sides of the debate over the team name—underscores the importance of the Supreme Court’s decision,” he said

Tim Kelly, partner at Fitzpatrick, Cella, Harper & Scinto, explained that the decision to grant certiorari in the  In re Tam case is not “wholly unexpected”.

“Indeed, the fact that the USPTO has suspended action on pending trademark applications that would be refused under the challenged statute underscores the need for timely clarification,” said Kelly.

But Kelly believes that the court’s silence on the Redskins petition is interesting because the case “raised issues that are not immediately presented in the In re Tam case, but which are nonetheless important from the perspective of the challenged statute”.

Thomas Brooke, partner at Holland & Knight, said: "By not taking the Redskins case, the Supreme Court preserves the option to issue a very narrowly tailored opinion on the issue of examination and registrability. It also gives the Fourth Circuit the chance to consider whatever comes out of the Supreme Court when deciding the case. And if the losing party is not satisfied, it can always ask for another hearing after the Fourth Circuit rules."

He added: "There are many marks on the register that have not been challenged that could easily fit into the categories of disparaging, especially as attitudes and society have changed. Without a clear rule, many of these could be liable to cancellation."

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More on this story

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.
4 October 2016   The US Supreme Court has declined to hear the Blackhorse v Pro Football trademark dispute, rejecting an appeal from the Washington Redskins, with lawyers saying the case was not “ripe for review”.