Update: Supreme Court has struck down the provision of the Lanham Act, affirming the 2015 Federal Circuit's decision that determined the provision was unconstitutional as it violated the First Amendment. Under heavy public pressure, the Supreme Court has agreed to review Section 2(a) of the 1946 Lanham Act, specifically the provision that bars the registration of marks deemed to be disparaging by the U.S. Trademark Office. After several trademark lawsuits made national news due to their high-profile petitioners and racially-charged content, the Supreme Court agreed to review whether Section 2(a) of the Lanham Act violates First Amendment rights.

The Lanham Act is the foundation of U.S. trademark law, and Section 2(a) of the Lanham Act has long been used to bar the registration of any trademark that “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…” Lanham Act, Section 2(a), 15 U.S.C. §1052.

While the Washington Redskins’ pending trademark appeal has garnered more national attention due to its drawn-out dispute between the National Football League team and Native American activists, the Supreme Court actually opted to review a different pending lawsuit filed by Simon Shiao Tam, whose trademark application for the “Slants” was rejected by the U.S. Trademark Office on Section 2(a) grounds. In its decision to reject Tam’s application, the Trademark Office stated that registration was denied because the term “Slants” was disparaging to Asian Americans.

An Asian American himself, Tam argues in his appeal that the band’s name is a deliberate attempt to reclaim the slur. While Tam lost initial appeals, the Federal Circuit eventually sided with Tam, holding that Section 2(a) violated the First Amendment’s guarantee of free speech. Now the Department of Justice has asked the Supreme Court to reverse the Federal Circuit’s decision.

Notably, the Washington Redskins have tried to intervene in Tam’s case, going as far as to file legal motions to tie the two cases together. While the Washington Redskins’ trademark case has garnered much more public attention, Tam has tried to distance himself from the latter’s appeal. Tam has gone on record to describe his legal fight as a vehicle for social justice, decrying the Washington Redskins’ attempt to “hijack” his cause.

In agreeing to review Tam’s case, the Supreme Court declined to include the Washington Redskins’ appeal. This is likely due to numerous reasons, chief among them the fact that the two cases focus on two different legal issues. Specifically, Tam’s trademark application was denied outright from inception while the Washington Redskins’ trademark had been successfully registered and then cancelled after decades of use.

While trademark registration is never a prerequisite for use of a trademark, lack of registration often puts a heavy burden on brand owners that intend to heavily use or promote their mark in connection with commercial goods. The Supreme Court’s review of Section 2(a) could have significant impact on the registration status of countless trademarks and trademark law itself.

For more information on this topic, please visit our Trademark Oppositions & Cancellations service page, which is part of our Trademarks practice.

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX.  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.  Additional information about the trademark law firm and its trademark attorneys may be found at www.klemchuk.com.

Klemchuk LLP hosts Culture Counts, a blog devoted to the discussion of law firm culture and corporate core values with frequent topics about positive work environment, conscious capitalism, entrepreneurial management, positive workplace culture, workplace productivity, and corporate core values.

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