On Wednesday, April 20, 2016, the United States Patent and Trademark Office petitioned the Supreme Court to take up the case on disparaging trademarks. Petition, Michelle K. Lee, Director, United States Patent and Trademark Office, Petitioner v. Simon Shiao Tam, No. 15-1293 (April 20, 2016).
The filing comes after the Federal Circuit struck down the Lanham Act’s disparagement clause on First Amendment grounds. In re Tam, No. 2014-1203 (Fed. Cir. Dec. 22, 2015) (denying petition for writ of mandamus). As we previously reported, the disparagement clause – which prohibits the registration of disparaging or offensive trademarks – was the basis for the cancellation of the Washington Redskins’ trademark registrations.
The Federal Circuit reviewed the issue en banc last December when it heard the case of “The Slants,” an Asian-American rock band that was denied a trademark registration under the disparagement clause. Overturning the 70-year-old statutory language and decades of First Amendment precedent, the Federal Circuit held that the disparagement clause was an unconstitutional restriction on free speech.
The case was cited as having potential ramifications on the Redskins’ case, which is currently pending on appeal in the Fourth Circuit. Pro-Football, Inc. v. Amanda Blackhorse, et al., 112 F. Supp. 3d 439, 467 (E.D. Va. 2015), appeal docketed, No. 15-1874 (4th Cir. Aug. 6, 2015).
In its Petition, the USPTO argues that the disparagement clause does not restrict speech, as trademark rights are acquired through common-law use. Lee v. Tam, No. 15-1293 at 11. The federal registration system confers benefits on registration owners but does not prevent trademark owners from using a mark to distinguish their goods or services in commerce. Id. at 12. Nevertheless, the Federal Circuit found in December that the risk of not getting a federal registration can create a chilling effect on speech. In re Tam, 2014-1203 at 38.
The USPTO argues, however, that because the government is not prohibiting speech entirely, that it has greater latitude under the First Amendment to choose not to support certain types of speech:
[B]y subjecting eligibility criteria established by Congress for participation in a voluntary federal program to the same strict First Amendment scrutiny that would apply to affirmative restrictions on the use of disparaging terms, the court of appeals blurred the line between statutory restrictions on speech and Congress’s refusal to support or subsidize private communications.
Lee v. Tam, No. 15-1293 at 19, 24.
The USPTO’s appeal is not a surprise since it suspended the Slants’ trademark application and sought an extension of time to file a petition for certiorari. However, the Supreme Court may wait to see if the Fourth Circuit creates a split on the Redskins’ case before taking up the matter. On the other hand, the Federal Circuit’s constitutional overhaul may already render the issue ripe for review.
Either way, we can expect to see some interesting decisions come down in the Fourth Circuit and potentially the Supreme Court in the near future. All of the parties involved have vigorously litigated the issue thus far and don’t show signs of letting up any time soon.