Earlier today, the US Supreme Court agreed to review whether the Lanham Act’s ban on offensive trademarks violates the First Amendment. The high court granted certiorari in the case of The Slants, the Asian American rock band that was denied a trademark registration under Section 2(a) of the Lanham Act.
The relevant provision of the Lanham Act prohibits registration of marks that comprise immoral, deceptive or scandalous matter or that may be disparaging to people. In December, the Federal Circuit struck down this provision in reviewing The Slants’ case, ruling that the provision violates the First Amendment. The Federal Circuit recognized that many of the marks that were rejected under the offensive marks ban conveyed “hurtful speech” but stated that even such speech is protected by the First Amendment. The USPTO then appealed that ruling to the Supreme Court.
Section 2(a) of the Lanham Act also served as the basis for the Trademark Trial and Appeal Board’s cancellation of the NFL team the Washington Redskins’ six federal trademark registrations in 2014. The decision was then affirmed by a federal district court in Virginia. Pro-Football, Inc. v. Amanda Blackhorse, et al., 112 F. Supp. 3d 439, 467 (E.D. Va. 2015). The team’s appeal is currently still pending before the Fourth Circuit, however, the team filed a request this summer to join The Slants’ case as a complementary companion before the Supreme Court. The high court has not announced whether the team’s request was granted. For more information regarding the Redskins’ case, see our previous post here.
The Supreme Court’s decision in this case may invalidate the ban on disparaging marks, which has been a part of the Lanham Act since it was enacted in 1946. At the very least, the decision will bring clarity to the scope of free speech protection as it relates to trademark rights.