By: Sharon Urias, Esq.
The U.S. Patent and Trademark Office’s (USPTO) authority to cancel and ban offensive trademark registrations has been under scrutiny the past few years. When the USPTO cancelled numerous trademarks of the NFL’s Washington Redskins for being offensive and disparaging of Native Americans, it created a firestorm of conversation and analysis in the social, political and legal communities. As Washington battled the USPTO in federal court (and in the court of public opinion), a lesser-known case by an Oregon rock band named The Slants made its way to the U.S. Supreme Court because it had been refused trademark registration by the USPTO due to the fact that the band’s name was associated with an anti-Asian slur.
Today, the Supreme Court delivered a blow the USPTO when it ruled in an 8-0 decision that trademarks considered to be derogatory are entitled to First Amendment Protection. The USPTO justified its trademark registration denials and cancelations by citing to the Lanham Act’s Section 2A disparagement clause that prohibits registration of trademarks that “may disparage . . . persons, living or dead, institutions, beliefs or national symbols.” However, the Court struck down that provision and held that it violates the Free Speech Clause of the First Amendment. In the Court’s opinion, Justice Alito stated, “We now hold that this provision violates the Free Speech Clause of the First Amendment. It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” Justice Alito further stated the disparagement clause “is not an anti-discrimination clause; it is a happy-talk clause” and “goes much further than is necessary to serve the interest asserted.” The Court essentially concluded that the disparagement clause of the Lanham Act’s Section 2A amounted to discrimination based on unpopular speech.
The Washington Redskins understandably view this decision as a victory in their own legal fight over their team name, stating that the Court “vindicated the Team’s position that the First Amendment blocks the government from denying or cancelling a trademark registration based on the Government’s opinion.” Clearly the team’s trademarks are extremely valuable and the Court’s decision could very well pave the way for the team’s trademarks to be reinstated and protected under the federal registration program. In fact, a federal appeals court in Richmond put the team’s case on hold while waiting for the Supreme Court to rule in the Slants case.
Now that the Supreme Court has held that Section 2A of the Lanham Act violates the Free Speech Clause of the First Amendment, there undoubtedly will be significant changes in trademark registration for “offensive” trademarks. Nevertheless, the Court did caution that the government still has an interest in preventing speech expressing ideas that offend. Therefore, at this point it remains unclear what parameters the USPTO will use to review offensive trademark registrations moving forward, but it has stated that it will continue to follow trademark laws in examining applications and will issue further guidance after a careful review of the Court’s decision.