The U.S. Supreme Court announced today that it will review whether the U.S. Trademark Office can deny registration of offensive trademarks or whether such prohibition violates the First Amendment. The dispute affects the constitutionality of Section 2(a) of the Lanham Act, which prohibits registration of such marks. The case originated in 2013 following the Office’s refusal to register THE SLANTS as a mark for an Oregon rock band on grounds that it was a derogatory slang phrase for people of Asian descent Continue Reading The SLANTS Trademark Will Play One More Gig: U.S. Supreme Court to Decide Constitutionality of Ban on Disparaging Trademarks
What do Washington D.C.’s NFL team, the Redskins, and Mr. Tam’s rock band, The Slants, have in common? Both have enjoyed unexpected victories recently and both have been called “disparaging” by the Patent and Trademark Office (“PTO”). However, while the Washington Redskins have been winning on the football field, many legal and business news websites have also been counting Mr. Tam’s recent success at the Federal Circuit as a major win for the football team. In reality, that issue is far from settled.
The Federal Circuit first took up the issue of Mr. Tam’s trademark last spring when it affirmed the PTO’s rejection of his application to register the mark “THE SLANTS,” the name of Mr. Tam’s Asian-American dance rock band that is known for its intentional use of Asian stereotypes in its lyrics and imagery in order to weigh in on cultural and political discussions about race and society. Despite the ruling adverse to Mr. Tam, Judge Moore went on to write a lengthy argument addressing the need for a deeper constitutional review of the statutory prohibition against disparaging marks, as codified in Section 2(a) of the Lanham Act. In re Tam, 785 F.3d 567 (Fed. Cir. 2015). This opinion teed up the en banc review by the Federal Circuit, which issued a pivotal opinion on December 22, 2015 overruling prior precedent, In re McGinley, 660 F.2d 481 (C.C.P.A. 1981), and held that the prohibition against registering disparaging marks at the PTO under Section 2(a) of the Lanham Act is an unconstitutional restriction on free speech. In re Simon Shiao Tam, No. 2014-1203, 2015 U.S. App. LEXIS 22300 (Fed. Cir. Dec. 22, 2015).
Based on the Federal Circuit’s ruling, the media immediately decreed victory for the Washington Redskins’ trademark battle, but there are reasons that the recent Federal Circuit ruling is not likely to be the last we hear of this issue:
First, the Federal Circuit is split. While 9 judges agree that the disparaging marks prohibition in Section 2(a) is entirely unconstitutional, the remaining 3 raise some valid concerns in partial or total disagreement. For example, writing for the Majority, Judge Moore places a great deal of importance on the chilling effect such regulation has on expressive speech. However, Judge Reyna and Judge Laurie argue in dissent that the Majority’s analysis is flawed from the very beginning as trademark registration is commercial speech, as was held in precedential opinions, and thus not subject to heightened scrutiny. Meanwhile, Judge Dyk attempts to draw a distinction between “core political speech” and “commercial speech” in trademarks. In the concurrence in part and dissent in part, Judge Dyk argues that the Majority is correct only as to a narrow category of trademarks which contain core political speech, but the statute remains constitutional as to the bulk of trademarks which are merely commercial speech. This fundamental disagreement as to what is or is not commercial speech is exactly the sort of issue that the Supreme Court may take up. In the dissent, Judge Reyna poignantly summarizes the disagreement: “The Majority holds today that Mr. Tam’s speech, which disparages those of Asian descent, is valuable political speech that the government may not regulate except to ban its use in commerce by everyone but Mr. Tam.”
Second, the Redskins’ mark is pending review before a different tribunal. The Redskins are currently appealing to the Fourth Circuit an adverse ruling by a U.S. District Court following the TTAB’s cancellation of the team’s mark recently. In doing so, the TTAB cited the same prohibition against registering disparaging marks under Section 2(a) at issue in the recent Federal Circuit opinion. While the Federal Circuit’s opinion will surely be influential to the Fourth Circuit, it is not precedential and the Fourth Circuit is not required to follow it. Thus, immediate victory for the Redskins is not guaranteed. Furthermore, should the Fourth Circuit rule in any way different than the Federal Circuit on determining constitutionality of Section 2(a), this circuit split would set up a likely Supreme Court review.
Third, the constitutionality of Section 2(a) as to immoral and scandalous marks is now unclear. While the Majority was careful to mention several times that their opinion concerns only the prohibition against registering disparaging marks, Section 2(a) also prohibits registering immoral and scandalous marks. Indeed, the Redskins mark may still be challenged under either of those additional prohibitions at a future date. To some, the logic and reasoning of the recent Federal Circuit ruling may be equally applicable to those prohibitions; both additional prohibitions can be categorized as content based and/or viewpoint based regulation of non-commercial expressive speech that fails the constitutional test of strict scrutiny. To others, there may be reasons to distinguish the Federal Circuit’s ruling as to the other Section 2(a) prohibitions; the prohibition against registering immoral and scandalous marks isn’t as vague or the effect isn’t as chilling on expressive speech. The Supreme Court may be interested in settling this discrepancy before the PTO is flooded with new registrations of offensive marks.
Despite their recent wins on the field, the Redskins’ Super Bowl prospects are still uncertain. The prospects of the team’s trademark registration remains similarly uncertain, despite the recent Federal Circuit holding.
Written by: Susan Neuberger Weller
The overwhelming public reaction to the US Trademark Trial and Appeal Board’s June 18 decision canceling six REDSKINS trademark registrations on grounds that the mark disparaged Native Americans has been impressive. However, news articles, op-ed pieces, informal commentary, and anecdotal stories all evidence wide range confusion about and a misunderstanding of the meaning and impact of the decision. This is an effort to set the record straight on the legal effect of this decision.
- The Washington Redskins still own valid and enforceable federal trademark rights in the REDSKINS marks. The federal registrations will not be formally canceled until all appeals have been exhausted, which will take years given the fact that the Redskins have indicated an intent to appeal the decision.
- Unlike most other countries in the world, US trademark law recognizes fully valid and enforceable trademark rights at common-law in trademarks that are being used but which are not registered. Thus, even if the registrations are eventually canceled, the Redskins will continue to own common-law rights in the trademarks which can be fully enforced in state and federal courts against third-party infringers.
- While the trademarks are still registered, the federal trademark registration notice ® may be used in connection with the REDSKINS marks. If these registrations are eventually canceled at the end of the legal process, the team can continue to use the REDSKINS marks and can use the unregistered trademark notice ™ with the marks.
- Anyone who thinks the Washington REDSKINS trademark is now up for grabs and can be used without incident is sorely mistaken, and anyone who has already begun to make unauthorized use of any of the REDSKINS marks is just asking for trouble. Should it choose to do so, the Redskins can still bring suit for infringement throughout the country.
- This decision is not based on a new law or any new Federal Government action, power, position, or initiative. The Section of the Trademark Act upon which the Trademark Trial and Appeal Board based its decision has been in existence and has been applied since 1946. The US Trademark Office, the Board, and courts around the country have regularly and for years refused to register trademarks and have canceled existing trademark registrations which were determined to be immoral, deceptive, scandalous, disparaging, or which brought persons, living or dead, into contempt or disrepute. The list of such marks is quite lengthy.
- Moreover, this is not a new case. These disparagement claims have been around for decades. This the second time that the Board has canceled these REDSKINS registrations on grounds of being disparaging to Native Americans. The first case, which was initially brought in 1992 and which was not litigated to a conclusion until 2010, was finally dismissed on grounds that had nothing to do with the disparagement issue. Rather, the case was dismissed on grounds of laches, which means that the specific Native Americans who filed the first case waited too long to do so and that delay prevented the case from moving forward.
- Until the registrations are formally canceled, which will be years from now if appeals are pursued, the REDSKINS trademark registrations will continue to be recorded with US Customs. This means that any unauthorized merchandise bearing a REDSKINS trademark which attempts to enter the country is still subject to seizure at the border by US Customs.
So, the Washington Redskins’ trademark rights are not dead and the REDSKINS trademark saga is far from over. Stay tuned.
Written By: Susan Neuberger Weller
A three-judge panel of the US Trademark Trial and Appeal Board (TTAB), for the second time and in a 2-1 decision, has held that the REDSKINS trademark used in connection with professional football and related services by the Washington Redskins National Football League team was disparaging to a substantial composite of Native Americans between 1967-1990, the time during which the registrations issued. It also held that the defense of laches did not apply to a disparagement claim where the disparagement pertains to a group of which the individual plaintiff or plaintiffs comprise one or more members. Accordingly, it ordered the registrations at issue canceled as violations of Section 2(a) of the Trademark Act. The cancellation of the registrations has no effect on the team’s ability to continue to use the REDSKINS marks.
Written by: Susan Neuberger Weller
Racial and ethnic disparagement is a hot topic at the Trademark Trial and Appeal Board these days. While a decision is still pending in the latest cancellation action involving the long disputed WASHINGTON REDSKINS professional football team marks, the Board in In re Simon Shiao Tam, recently affirmed a federal trademark examiner’s refusal to register THE SLANTS as a mark for an Oregon rock band composed of Asian Americans on grounds that it was a derogatory slang phrase for people of Asian descent.
Section 2(a) of the Trademark Act prohibits registration of any mark which “[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.” In order to determine whether a mark is “disparaging” under this Section, the Board applies a two-part test, analyzing: (1) the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and (2) if that meaning is found to refer to identifiable persons, institutions, police or national symbols, whether that meaning may be disparaging to a substantial composite of the reference group.
In this case, the Board considered evidence consisting of definitions of the word “slant” from various dictionaries and other reference sources, printouts from the band’s own webpage as well as its Wikipedia entry, and online articles reporting on the opinions of various Asian groups and individuals that the term “slant” was a disparaging term referring to Asian people. The band’s own Wikipedia entry stated that the name derived from “an ethnic slur for Asians,” and a band member was quoted as stating “We want to take on these stereotypes that people have about us, like the slanted eyes, and own them.”
In considering the likely meaning of the term, the Board noted that “the nature of the identified services” for which the mark was used were live performances by a musical band. Thus, the Board found that the term “necessarily identifies people, i. e., the live performers,” and those who attended the live performances would necessarily understand THE SLANTS to refer to the persons who comprised the band. Moreover, it found that the evidence in the case showed that the slang meaning of the word “slants” was actually being touted by the band itself in connection with the services it was offering in the marketplace. Accordingly, the “likely meaning” of the term as used in connection with the services was as a derogatory reference to people of Asian descent. The fact that the band might have good intentions in trying to “own” the term did not, in the Board’s opinion, speak for the entire community of persons of Asian descent since the evidence also demonstrated that a substantial composite of that group found the term objectionable.
It is important to note that the Board only has the authority to prevent federal registration of a trademark. It has no authority, as it made clear in its opinion in this case, to enjoin any use of a mark. Thus, although it could not “call upon the resources of the federal government” in order to obtain the benefits of a federal registration for its mark, the band’s First Amendment rights were not abridged by this refusal since it could continue to use the mark and claim ownership of unregistered, common-law rights in it. This is also true for the WASHINGTON REDSKINS marks, which have been under fire for many years. Even if the Board cancels these registrations, the marks, which have been in use for a very long time, will continue to benefit from substantial common-law trademark rights developed over decades of use.