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U.S. Supreme Court Clears Way for Registration of “Disparaging Trademarks” with USPTO

The U.S. Supreme Court recently threw a wrench in long-established trademark law, deciding in favor of protecting a category of marks that were previously deemed not eligible for registration by the U.S. Patent and Trademark Office. Trademarks are generally words, phrases, symbols, or designs used to identify and distinguish the source of an individual’s or a company’s goods and services from its competition.

On June 19, 2017, the Court unanimously struck down a seventy-year-old prohibition against federal registration of disparaging trademarks. The Court ruled that the provision of trademark law barring the federal registration of “disparaging” trademarks, known as the Lantham Act, 15 U.S.C. § 1052(a), violated the Free Speech Clause of the First Amendment.

That case, Matal v. Tam, 137 S. Ct. 1744, 198 L. Ed. 2d 366 (2017), involved “The Slants,” an Oregon rock band composed of Asian-American performers. The band’s founder tried to register the band name as a trademark in 2011, but the USPTO denied the request, stating that the word “Slants” disparages Asians. When the band’s founder appealed the rejection, the U.S. Court of Appeals for the Federal Circuit found against the Trademark Office, holding that the exclusion of “disparaging” marks violated the First Amendment. The Supreme Court affirmed the Federal Circuit, finding the provision of the Lanham Act that restricted the registration of marks that “disparage” was a violation of the Free Speech Clause of the First Amendment. Because of this decision, words and phrases traditionally deemed disparaging are now eligible for registration by anyone who chooses to use such words to identify their goods and services.

You may have heard of the long-running legal battle concerning the registration of “REDSKINS” by the National Football League’s Washington Redskins.   In 2014, the Trademark Trial and Appeal Board declared that the team’s moniker was offensive to Native Americans and therefore ineligible for trademark protection. See Blackhorse, 111 U.S.P.Q.2d 1080 (T.T.A.B. June 18, 2014). Appeals followed, and a federal district court backed the Board’s decision. Pro-Football, Inc. v. Blackhorse, 62 F. Supp. 3d 498, 499 (E.D. Va. 2014).

In light of the Court’s decision in the Tam case, however, the Justice Department recently conceded defeat in the ongoing Redskins case, requesting that the Fourth Circuit Court of Appeals reverse the judgment of the district court and remand the case with instruction to enter judgment in favor of Pro-Football.

In the aftermath of the Matal v. Tam decision, anyone can now register words and phrases that were previously deemed to “disparage” persons, institutions, or beliefs. Whether this will lead to a floodgate of disparaging marks remains to be seen. Matal v. Tam, however, now ensures that the USPTO may no longer deem a trademark eligible for registration based on a concern that it is disparaging.

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