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“Disparaging” trademarks – the Supreme Court may take up a difficult conflict between trademark law and the First Amendment

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Last year, the Federal Circuit ruled that Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), which prohibits registration of “scandalous, immoral, or disparaging” marks, could not be used to deny registration of the mark the “Slants” for an Asian-American band, because Section 2(a) violates the First Amendment.

In 2014, in a widely reported decision, the U.S. Patent & Trademark Office canceled several trademark registrations owned by the Washington Redskins because the term “Redskins” is disparaging of Native Americans.  But last year, the Federal Circuit ruled that Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), which prohibits registration of “scandalous, immoral, or disparaging” marks, could not be used to deny registration of the mark the “Slants” for an Asian-American band, because Section 2(a) violates the First Amendment.  Now, petitioners in both cases are seeking review in the Supreme Court.

In the Slants case, the government is seeking Supreme Court review and is arguing that denial of a trademark registration for the term “Slants” does not violate the First Amendment because the band may still use the name without registration.  According to the government, trademark registration is merely a federal benefit that can be conferred to foster federal policy; as a result, denial of registration is not, in the government’s view, a restriction on speech. 

In the Redskins case, the team is seeking Supreme Court review, even though their case has not yet been considered by Fourth Circuit Court of Appeals.  Invoking a procedure known as “certiorari before judgment,” the team argues that if the Court decides to hear the Slants case, it should also hear the Redskins’ case because it raises related, but distinct, questions of constitutional importance.  The team maintains that canceling their longstanding trademark registrations not only violates the First Amendment, but also deprives them of their due process rights.

Clash between Trademark  Law and First Amendment Rights

If the Court decides to hear one or both of these cases, it will be faced with a vexing problem – can the government deny trademark registration to words or images that are undeniably offensive or hurtful to a substantial number of people, or does the First Amendment require that the government simply stay out of the business of judging whether words or images are too “disparaging” to be worthy of registration?

It is never easy to predict how the Court will rule, but it is clear that First Amendment protections extend to speech that is undoubtedly hurtful. And recent history suggests that the Supreme Court is willing to uphold that basic principle, whether by permitting hateful and offensive picketing at military funerals [Snyder v. Phelps, 562 U.S. 443 (2011)] or by holding unconstitutional a law criminalizing virtual child pornography [Ashcroft v. Free Speech Coalition, 535 U.S. 234 (2002)].  However these cases are resolved, they promise to have important implications for current and prospective trademark owners.