By: Eunice Chung and Naomi Abraham (Washington, D.C.)

The U.S. Supreme Court agreed to decide whether the disparagement provision of the Lanham Act is facially invalid under the Free Speech Clause of the First Amendment.  This specific case, Lee v. Tam, focuses on The Slants, a rock band that was denied a trademark registration on the grounds that its name is disparaging to Asian Americans.

Section 2(a) of the Lanham Act, otherwise known as the “disparagement provision,” specifically states that no trademark shall be refused registration unless it “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”  The disparagement provision has been a contentious issue for years because many claim it is in direct conflict with the First Amendment right to free expression.  However, for many years courts have ruled that it does not violate the First Amendment because the disparagement clause does not ban actual real-life use of the offensive mark, nor does it prevent the user from enforcing common law trademark rights against other users. When determining disparagement in court, the Trademark Trial and Appeal Board (TTAB) asks two questions: First, what is the meaning of the trademark as used in connection with the goods and services offered? Second, is the meaning of the trademark disparaging?  These questions are answered in the context of the respective dates of registration of the mark. Whether the trademark is deemed disparaging is determined by a “substantial composite” of the affected group, and not by the majority of the affected group or by all Americans.

Contrary to precedent, last December, the Court of Appeals for the Federal Circuit (CAFC) decided the case In re Tam, concluding that the disparagement clause is unconstitutional because it violates the First Amendment’s free speech guarantee.  The CAFC stated that “[i]t is a bedrock principle underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys” and thus, “[t]he government cannot refuse to register disparaging marks.”  The CAFC dismissed the government’s argument that a federal trademark registration is “government speech” amounting to an endorsement of the trademark’s message.  The U.S. Patent and Trademark Office (PTO) appealed the ruling to the Supreme Court.

The conflict between the disparagement provision and First Amendment is familiar because of the high-profile litigation concerning the Washington Redskins trademarks.  In June 2014, in the case Blackhorse v. Pro-Football, Inc., the TTAB of the PTO voted to cancel six of the Washington Redskins trademarks, concluding that the term “redskins” is disparaging to a substantial composite of Native Americans (for more information on the TTAB decision, please see our previous blog post here). To challenge this ruling, the Redskins filed a Notice of Appeal to the Fourth Circuit.  Earlier this year, while this case is still pending, the Redskins filed an unusual petition asking the Supreme Court to hear the case before the Fourth Circuit has had a chance to decide.  This Monday, the Supreme Court spoke on this request and denied Redskins’ petition for certiorari before judgment to join the Lee v. Tam case.  Therefore, the case is still pending before the Fourth Circuit, scheduled for arguments in December, so be sure to check back regularly for additional updates as this case will likely develop quickly going forward.

The case on The Slants, Lee v. Tam (Case No. 15-1293) will be argued this term and a decision is expected in summer 2017.