On December 16, 2016, the International Trademark Association (“INTA”) filed an amicus brief with the U.S. Supreme Court in support of Simon Tam, founder of the Slants. Lee v. Tam, No. 15-1293, Br. Of Amicus Curiae Int’l Trademark Assoc. INTA—a global association comprising more than 7,000 trademark owners and legal practitioners—urged the Court to uphold the Federal Circuit’s decision to strike down the statutory prohibition on the registration of disparaging trademarks.

New Slants

The Band Who Shall Not be Named

The case centers around the Slants, an Asian-American dance-rock band, and the U.S. Patent & Trademark Office’s refusal to register the band’s name on the grounds that the “Slants” trademark is disparaging and therefore unregistrable under Section 2(a) of the Lanham Act. The case pending before the Supreme court may have far-reaching implications for trademark owners and would-be owners, including for the Washington Redskins and their ongoing trademark battle. (Read more about the Redskin’s dispute here.)

In its brief, INTA supports the Federal Circuit’s ultimate conclusion that Section 2(a)’s ban on disparaging marks cannot pass constitutional muster. However, the organization reaches that conclusion a different way.  INTA argues the ban is unconstitutionally vague under the Fifth Amendment and this vagueness has led to inconsistent and arbitrary applications of the rule by USPTO examiners. The Federal Circuit based its December 22, 2015 decision on free speech grounds.

While INTA agrees with the Federal Circuit that that trademarks are private rather than government speech and thus subject to the First Amendment protection, INTA rejects the Federal Circuit’s strict scrutiny analysis. The organization insists trademarks address only commercial speech and that “the majority erred in concluding that commercial and expressive speech were ‘inextricably intertwined’” in the Slants trademark.

Because a trademark, “taken as a whole,” serves a commercial purpose and because trademark law does not protect any expressive message separate and apart from its function as a source identifier—trademark laws should be subject to intermediate scrutiny. Moreover, strict scrutiny is unwarranted because the denial of a trademark registration does not restrict speech; terms that have been refused registration may still be used for expressive (or commercial) purposes.

Cautioning against decisions that “impose[] an inappropriately high burden on the government’s authority to regulate trademarks,” the organization also questioned the Federal Circuit’s conclusions about the ban’s restrictions and chilling effects on speech.   It is unclear whether INTA believes Section 2(a), as currently written, would survive intermediate scrutiny.  However, the organization posits that a trademark restriction banning hate speech might survive.

INTA also repudiates the appellate court’s suggestion that owners of unregistrable marks may not have a cause of action under Section 43(a) of the Lanham Act.

To date, more than 15 amicus briefs have been filed in this case by various legal organizations and individuals, including the Native American petitioners who filed for the cancellation of the Washington Redskins’ trademarks (in support of the USPTO), the US Chamber of Commerce (in support of Mr. Tam) and the ABA (in support of neither party).

We will continue to monitor the developments in the Slants (and Redskins) cases and encourage you to subscribe to the Brand Protection Blog here to receive our latest posts and updates.  In the meantime, the Slants will release their latest work – The Band Who Must Not Be Named – on January 17, one day before oral argument!

For further reading, see our posts:

USPTO files opening brief in Slants case (Nov. 14, 2016)

UPDATE: SCOTUS will review ban on offensive marks (Sep. 29, 2016)

Redskins seek to join Slants case at Supreme Court (Apr. 29, 2016)

Supreme Court asked to review disparaging trademarks decision (Apr. 21, 2016)

PTO not required to register disparaging trademark until cert deadline passes (Apr. 14, 2016)