Supreme Court Will Hear Arguments On Validity Of “Scandalous, Disparaging” Trademarks

Federal law prohibits the U.S. Patent & Trademark Office from registering trademarks deemed “immoral, deceptive, or scandalous,” or that “disparage… persons, living or dead, institutions, beliefs, or national symbols.” This has resulted in disputes like the cancellation of the Washington Redskins trademark. This morning, the nation’s highest court agreed to hear arguments in a case seeking to throw that rule out.

The case that will go before the U.S. Supreme Court involves the trademark for The Slants, an Oregon-based rock band whose Asian-American members knowingly took the controversial pejorative for their name as a deliberate commentary on the state of race, culture, and music.

Unlike the Redskins trademark, which the USPTO granted and had repeatedly upheld before ultimately deciding in 2014 to cancel it, the band’s application to trademark the “Slants” name was rejected.

Rejecting or canceling a trademark doesn’t prevent the applicant from using that mark — it just means there are no protections against someone else using the same name. Because the mark could still be used in commerce, courts had previously held that the Lanham Act — the law that includes these prohibitions — was not overly restrictive of the First Amendment right to free expression.

But in Dec. 2015, the D.C. Circuit Court of Appeals ruled that the 70-year-old law was indeed an overreaching form of content-restriction on the part of the government.

By deeming something offensive or disparaging — and thus unable to be trademarked — the appeals court concluded that the government is expressing its disapproval of a particular name or term.

“When the government discriminates against speech because it disapproves of the message conveyed by the speech, it discriminates on the basis of viewpoint,” read the majority opinion in that case.

In April 2016, the USPTO petitioned the Supremes, arguing that the Lanham act was not a restriction on private speech or conduct, but “simply offers federal benefits on terms that encourage private activity consonant with legislative policy.”

Slants’ frontman Simon Tam responded to the petition [PDF] saying that even though he’d been successful in his appeal, he welcomed the opportunity to bring this issue before SCOTUS, and his actual control of the Slants mark remains in limbo unless the nation’s highest court chimes in.

“This issue is undeniably important,” reads Tam’s brief. “The Court is very likely to address it in the near future, in another case if not in this one.”

One such case is the Redskins’ dispute with the USPTO. The NFL team has also petitioned SCOTUS to hear its appeal, even though a circuit court of appeals has yet to hear oral arguments in the case.

In his brief, Tam had asked SCOTUS to either hear his case alongside the Redskins’ case or at least not wait until the NFL team’s dispute had gone through all the routine appellate stages before hearing them together, as the USPTO “has halted the processing of all trademark applications raising disparagement issues” pending the SCOTUS ruling.

In addition to petitioning for their own appeal, the Redskins filed a brief [PDF] in the Slants case, arguing that the Supremes should not take up that petition, thus allowing the D.C. Circuit ruling to stand, which would benefit the team. At the very least, the Redskins wanted the two matters heard together.

Today’s list of petitions granted did not include the Redskins appeal, nor did it deny that petition. Regardless of whether SCOTUS hears arguments specific to the team’s dispute, the court’s decision (assuming there’s not another tie) will certainly have a direct impact on the status of the Redskins’ trademark.