U.S. Trademark Office Seeking Another Chance to Ban Disparaging Trademarks

We previously reported on the Washington Redskins’ challenge of the U.S. Patent and Trademark Office’s (USPTO) cancellation of several Redskins trademarks.  See Redskins Seeing Red.  Since that time, the en banc (all judges) Federal Circuit ruled that the Lanham Act (frequently referred to as the Trademark Act), which bans registration of marks that disparage people, ran afoul of the First Amendment by restraining speech.  With that ruling, the Court declared unconstitutional the agency’s revocation of the Washington Redskins’ registrations.

Yesterday, the USPTO asked the U.S. Supreme Court to overturn the Court of Appeals for the Federal Circuit’s ruling.  According to the USPTO, the Federal Circuit fundamentally misunderstood how trademark law and trademark registrations work — confusing a refusal to confer benefits to the owner of an offensive mark with a refusal to allow them to use the mark at all.  “The court of appeals disregarded this court’s teaching that, when Congress does not restrict private speech or conduct, but simply offers federal benefits on terms that encourage private activity consonant with legislative policy, it has significant latitude to consider the content of speech in defining the terms on which the benefits will be provided,” the USPTO wrote. Although these issues have been in the news since June 2014, when the football team’s registrations were first cancelled, this case does not involve the Washington Redskins’ trademark registrations.  This case pertains to a band called “The Slants,” who were refused their application for registration on the grounds that the name is offensive to those of Asian ancestry.

After initially siding with USPTO, the Federal Circuit decided to hear the Slants case en banc.  On Dec. 22, the full court ruled that “the government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks.” “Many of the marks rejected as disparaging convey hurtful speech that harms members of oft-stigmatized communities,” U.S. Circuit Judge Kimberly Moore wrote for a nine-judge majority. “But the First Amendment protects even hurtful speech.” The case is Lee v. Tam in the Supreme Court of the United States.