Most people are familiar with the decades-long controversy surrounding the Washington Redskins’ name and the cancellation of its trademark registrations on the ground that the term REDSKINS is disparaging. One of the issues in that case questions the constitutionality of the prohibition against registration against disparaging terms. Although the Washington Redskins case has most famously addressed this issue, a recent decision involving a fairly unknown Asian American rock band, THE SLANTS, may prove to be the game changer. A federal trademark application for “THE SLANTS” was refused registration on the ground that the mark is disparaging. The Trademark Trial & Appeal Board (“TTAB”) affirmed the refusal to register and the Federal Circuit affirmed the TTAB’s decision on appeal. Merely a week later, however, the full Federal Circuit- acting on its own motion- vacated the panel decision and has set the matter for an en banc hearing on one question: Does the bar on registration on disparaging terms violate the First Amendment?

It is undeniable that the current law allows the PTO considerable deference in denying an applicant’s registration and the significant advantages afforded the owners of federally-registered trademarks. But does is this enough to deem the law unconstitutional? The answer is unclear and it seems that the Federal Circuit agrees. Of course, while many hope that the Federal Circuit plans to examine the First Amendment implications of the prohibition against registration of disparaging marks, it may simply rule once and for all that the prohibition does not violate the freedom of speech. But if the court rules that the current trademark law is unconstitutional, it could have far-reaching effects on litigation elsewhere and particularly on the Washington Redskins battle.

For more information on this topic, please visit our Trademark Protection service page, which is part of our Trademark practice.

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm.  The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution. 

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