By: Sharon Urias, Esq.
For decades, the U.S. Patent and Trademark Office (USPTO) has had the authority to cancel and ban offensive trademark registrations. The USPTO is granted its authority to cancel and ban offensive trademarks in Section 2(a) of the Lanham Act. One of the more recent high profile cases has been the USPTO’s cancellation of numerous Washington Redskins’ trademarks as offensive and disparaging of Native Americans. However, the future of the USPTO’s power to police offensive marks is under review by the United States Supreme Court over First Amendment concerns.
An Asian-American rock band from Oregon called “The Slants” was refused trademark registration by the USPTO in 2013 because the band’s name, which is associated with an anti-Asian slur, violated Section 2(a) of the Lanham Act. The band subsequently filed an appeal in federal court. The court sided with The Slants, holding that the band was unconstitutionally denied the benefits of trademark registrations and protections based on speech. Consequently, the USPTO appealed the case to the U.S. Supreme Court and the Court granted certiorari. According to Simon Tan, the owner of the trademark application for “The Slants,” he chose that name to bring attention to discrimination against Asian-Americans.
It is too soon to tell how the Supreme Court ultimately will decide this issue. But, during the recent oral argument, the Justices expressed concerns regarding Section 2(a)’s limits on free speech. One concern addressed by Justice Kagan was that the disparagement bar is a “fairly classic case of viewpoint discrimination.” Justice Ginsburg pointed out the “large concern” that the disparagement provision is too vague. Justice Sotomayor appeared to dismiss the First Amendment concerns by noting that if the USPTO decision were to stand, the band could still use the name “The Slants,” it just could not prevent someone else from using the same trademark—although the band would still have recourse because it could sue under other claims for relief. She concluded that the band’s speech “is not being burdened in any traditional way.”
So, the question remains: Is the USPTO’s enforcement of Section 2(a) for offensive and disparaging speech a violation of the First Amendment? The outcome of the Court’s decision, which is expected later this year, could significantly alter the course for certain controversial marks in the future (the fate of trademarks for The Slants and quite possibly the Washington Redskins hangs in the balance). Stay tuned.