26 June 2017Trademarks

WIPR survey: SCOTUS made right decision in Lee v Tam TM clash

The US Supreme Court made the right decision in Lee v Tam when it deemed the US government’s ban on disparaging trademarks unconstitutional, according to WIPR readers.

In a survey, WIPR asked its readers whether the court made the right decision—the majority (61%) said yes.

The US Patent and Trademark Office (USPTO) had denied an application, brought by the Simon Tam, the founder of rock band’s The Slants, to register ‘The Slants’ as a service mark.

The refusal was based on 5 USC section 1052 (section 2(a) of the Lanham Act), which bars trademarks that are likely to disparage people, institutions or beliefs from registration.

The Supreme Court handed down its  judgment in Lee v Tam (now Matal v Tam) earlier this month, holding that the trademark ban violates the First Amendment free speech rights.

One reader, who agreed that the court made the right call, said it should not be down to public officials to decide what speech “disparages”.

They added that public officials should “stick to deciding matters related to the consumer-focused, core commercial functions of a trademark: confusing similarity, deceptiveness, descriptiveness, functionality”.

Another added that section 2(a) of the Lanham Act was “vague, inconsistently invoked, and an impingement on first amendment rights”, while another simply said that “free speech must prevail”.

In a concurring opinion in the decision, Justice Anthony Kennedy said: “A law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all.”

He added that the First Amendment doesn’t “entrust that power to the government’s benevolence”.

Not all readers agreed with such sentiment.

One reader noted that the ruling takes the US “out of step with other countries which usually have a ‘contrary to public morality’ law”, while questioning what would happen if a Nazi symbol was included in a trademark application.

Another reader added that using the “very basis of a trademark prohibits first amendment rights”, as it stops others from freely being able to use the mark

“Allowing people to register trademarks prevents third parties using particular terms to market their products. If the logic in this decision is followed through, then there should be no trademarks at all as their very existence is a limitation of the freedom of speech.”

For this week’s question, we ask: “Last week, WIPR reported that an attorney general (AG) at the CJEU had issued an opinion stating that shoemaker Christian Louboutin should be able to register red soles on high-heeled shoes as an EU trademark.  Do you agree with the AG?”

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More on this story

19 June 2017   The US Supreme Court has deemed the government’s ban on disparaging trademarks unconstitutional, handing a win to rock band The Slants and overturning more than 70 years of legal practice.
20 June 2017   The Washington Redskins, a National Football League (NFL) team, are also winners in a ruling handed down by the US Supreme Court, according to lawyers.