U.S. Supreme Court to Review "Disparaging" Trademarks

In a case involving rock band The Slants, the high court will tackle whether the government's refusal to register is facially invalid under the First Amendment.
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Coming next term to the highest court in the country is a review of when it's appropriate — if ever — for the U.S. Patent & Trademark Office to refuse a trademark registration for being "scandalous, immoral or disparaging." On Thursday, the U.S. Supreme Court agreed to hear a case involving Simon Tam, the Asian-American frontman for The Slants.

Tam went to court after being refused. He argued that he was attempting to "take ownership" of Asian stereotypes and that the agency was abridging his constitutional and procedural rights.

The U.S. Court of Appeals for the Federal Circuit initially ruled against him, but upon a further review before a fuller panel of appellate justices, gave him the victory.

Although a 1981 appellate ruling in McGinley held that "the PTO's refusal to register appellant's mark does not affect [applicant's] right to use it," the Federal Circuit chose to take a broader look at the importance of trademarks amid the "bedrock principle underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys."

The Federal Circuit further concluded that denying trademark registrations can amount to "viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of § 2(a) is unconstitutional."

The decision was loudly cheered by the Washington Redskins, the NFL team that has been fighting in court after the USPTO chose to cancel its trademark registration over a "derogatory" nickname. In fact, the team has submitted a brief urging the high court to hear its case in tandem with the "Slants" one.

The government on behalf of USPTO director Michelle Lee chose to seek the Supreme Court's review on the question of whether the disparagement provision is facially invalid under the free speech clause of the First Amendment — and now, it's got it. Expect some naughty language at the hearing.