Breakthrough Trademark Decision on Free Speech from United States Court of Appeals

Written by: Sam Crochet, Esq.

The Court of Appeals for the Federal Circuit recently reviewed the constitutionality of the Trademark Trial and Appeal Board’s (TTAB) holding that a mark was unregistrable due to its “disparaging” nature. “The Slants,” an Asian-American musical band, attempted to register its name with the US Patent and Trademark Office. After the examining attorney and TTABrefused to register the mark under 15 USCA §1052(a), the Court of Appeals held prohibition on the registration of disparaging trademarks “significantly chills private speech” and that this instancewas not an acceptable regulation of commercial speech. The court used this rational to find, by a 9-3 vote, that barring registration of disparaging marks violates trademark applicants’ free speech rights.[1]

It should be noted the Court of Appeals’ decision is not binding on numerous other federal courts with pending matters.Following years of heavy scrutiny and media fall out, the NFL’s Washington Redskins lost trademark protection in 2014 due to a similar disparaging nature of their mark. The Fourth Circuit is set to hear arguments on this case in December 2016, but the Supreme Court may intervene. Notwithstanding the mere persuasive authority of the Slants decision, the Supreme Court could consider it in reviewing the Redskins ruling since 15 USCA § 1052(a) is a long standing and heavily relied upon federal statute and since there is a developing split amongst federal courts. A policy issue looming large over such a review is the grave financial risk trademark owners take on registering controversial marks. For example, the Slants ruling can now be utilized in “cancellation proceedings” that address trademarks many years after registration, development of brand identity, consumer reliance, and substantial financial investment.Despite their federal court victory, the Slants have requested the Supreme Court hear their case alongside that of the Washington Redskins with the hope they will trigger a clear precedent.We will be sure to monitor either the Fourth Circuit’s or Supreme Court’s decision in the Washington Redskins matter as well as any movement on the Supreme Court level regarding the Slants case.

Of course, defending your trademark rights even long after registration may be significant towards your achieving your goals as an organization. If you have any questions regarding registering a trademark or protecting a mark after its issuance, our intellectual property attorneys can craft an efficient and specific plan of action for any situation, entity, or individual.

[1]§1052(a) of the Lanham Act bars registration of marks that may disparage or bring into contempt or disrepute people, institutions, beliefs, or national symbols. Also of note, content based speech laws, which target speech based on its communicative content, are presumptively unconstitutional.