21 April 2016Trademarks

USPTO asks Supreme Court to hear The Slants case

The US Patent and Trademark Office (USPTO) has petitioned the US Supreme Court, asking it to review a lower court decision that said denying rock band The Slants a trademark for its name would violate First Amendment rights.

In a writ of certiorari filed yesterday, April 20, the USPTO asked the court whether the disparagement provision in the Lanham Act is “facially invalid under the free speech of the First Amendment”.

Section 15 of the Lanham Act bars the registration of trademarks that may disparage living or dead people, or institutions or beliefs.

In a decision handed down in December last year, an en banc US Court of Appeals for the Federal Circuit said that musician Simon Tam’s trademark application for his band’s name ‘The Slants’ can be registered.

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

The petition to the Supreme Court is the latest development in a saga that some lawyers tipped to reach the country’s top court from the outset.

Last month, WIPR reported that the USPTO had asked its examiners to suspend potentially offensive applications in light of an impending appeal to the Supreme Court.

In response, the band asked the federal circuit to order the USPTO to proceed with processing its application, but the federal circuit denied the request.

Katy Basile, partner at law firm Reed Smith, said she believes the Supreme Court is likely to take the case.

Basile added that it might be possible to differentiate between the Slants case and another case centring on disparaging trademarks involving National Football League club the Washington Redskins.

The Washington Redskins is currently locked in a battle with a group of Native Americans centring on six of the club’s trademarks, all of which include the term ‘Redskins’—a disparaging term for Native Americans.

In June 2014, the TTAB revoked the marks on the grounds that they were disparaging despite the team’s claim that the refusal violated its First Amendment rights. That decision was upheld by the US District Court for the Eastern District of Virginia last year.

The case is due to be heard before the US Court of Appeals for the Fourth Circuit later this year.

Basile said differences between the cases could be based on the “expressive versus commercial” nature of the marks and appropriate levels of review.

“This approach could allow for a situation where restraints on disparaging, expressive marks analysed under strict scrutiny are unconstitutional, while refusing federal registration of marks on the grounds that they are disparaging, but predominantly commercial, would be constitutional,” she said.

Michael Kelber, partner at Neal Geber & Eisneberg, said: “I hope the Supreme Court accepts the appeal—it will be very helpful in clarifying important First Amendment issues that are raised in this case and the subsequent Redskins case.”

WIPR will be hosting a webinar on May 11 that will discuss both the Redskins and Slants cases.

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More on this story

26 April 2016   National Football League club the Washington Redskins has filed a petition at the US Supreme Court asking it to hear the club’s high-profile trademark dispute, even though an appeals court has yet to rule on the issue.
12 May 2016   The US Supreme Court may rule that disparaging trademarks cannot be registered, but a scenario could arise whereby one set of disparaging marks are cancelled but another accepted, a WIPR-organised webinar has revealed.
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.