Trademarks Get Nasty

The Trademark Act prohibits registration of any mark that, among other things, 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. Now a recent ruling by the Court of Appeals for the Federal Circuit on the issue of disparaging speech and trademarks may have brought civility in trademarks to an end.

In December, 2015, the U.S. Court of Appeals for the Federal Circuit held in In Re Simon Shiao Tam (“Tam“) that the refusal by the United State Patent and Trademark Office (PTO) to register the trademark THE SLANTS for live performances by a musical band ran afoul of the First Amendment’s guarantee of free speech. The Court ordered the PTO to register the mark while expressly recognizing that the term ‘slant’ may in fact be disparaging to Asian Americans. More to the point, the Federal Circuit’s ruling declared unconstitutional the section of the Trademark Act’s that proscribed registration of terms viewed as disparaging. SoTam is important in the trademark universe because the Federal Circuit is the court to which most decisions of the PTO are appealed, and after the Tam decision, it is the court to which appeals concerning refusals to register disparaging marks will certainly be taken. Consequently, until or unless the Federal Circuit’s ruling is appealed to the Supreme Court, Tam will have an impact, perhaps a forceful impact, on current and future decisions of the Trademark Office involving federal protection of allegedly disparaging trademarks.

As it turns out, the Supreme Court may be brought into this controversy sooner than later, because another case involving disparaging marks has taken a very different course in another federal district. That case involves the Washington Redskins football team and a controversy that has regularly come to the forefront of current news over several years. The question at issue in that case is whether “redskin” is disparaging of Native Americans and so prohibited from federal trademark protection. The matter was first brought before the PTO’s Trademark Trial and Appeals Board (TTAB) in 2006 as a petition to cancel six of the football team’s “redskins” trademark registrations. In 2014 (these things take time) the TTAB ordered that the team’s six registrations of marks including “redskins” be cancelled.

The registrations are not cancelled, however, and the team continues to use their trademarks, because the football team appealed the TTAB decision. But the team appealed not to the Federal Circuit, but to the Federal District Court for the Eastern District of Virginia, who last year agreed with the TTAB’s order to cancel the team’s registrations. That district court decision, contrary to the Federal Circuit’s December decision, is now under appeal in the U.S. Court of Appeals for the Fourth Circuit, and the Fourth Circuit is not obliged to agree with the Federal Circuit. So if the Fourth Circuit upholds the PTO’s view that football team’s “redskins” marks are disparaging and their registrations must be cancelled, then the ultimate resolution of a polar disagreement among federal appeals courts becomes a more likely matter for the U.S. Supreme Court. And it is a virtual certainty that the football team, if it loses in the Fourth Circuit, will ask the Supreme Court to decide.

In the meantime, considering the influence of Federal Circuit decisions on the Trademark Office, disparaging words are now less likely to be refused registration.