January 19, 2021

Volume XI, Number 19

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January 19, 2021

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January 18, 2021

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Supreme Court to Review Registrability of Disparaging Trademarks

On September 29, 2016, the Supreme Court of the United States granted a petition for certiorari to consider the constitutionality of a provision of the US trademark laws directed to the registrability of disparaging trademarks. Lee v. Tam, Docket No. 15-1293 (Sup. Ct., Sept. 29, 2016) (certiorari granted).

The sole question presented is whether the disparagement provision of the Lanham Act, 15 USC § 1052(a), which provides that no trademark shall be refused registration on account of its nature unless, among other things, it “[c]onsists of . . . matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” is facially invalid under the Free Speech Clause of the First Amendment.

The case concerns a rock band called The Slants founded by Simon Tam. Tam’s goal in naming his band was to reappropriate a derogatory term for people of Asian descent. Tam tried to register “The Slants” as a trademark but was refused on the basis that the name was “disparaging” within the meaning of § 1052(a). 

In December 2015, a divided (9–3) en banc panel of the US Court of Appeals for the Federal Circuit (in addition to the opinion of the Court, four other concurring and dissenting opinions were issued) held § 1052(a) facially invalid. In essence, the Federal Circuit ruled that disapproval of a mark based on its content violates the First Amendment right to free speech: “the First Amendment protects even hurtful speech.” 

Note: The Washington Redskins are challenging the Trademark Trial and Appeal Board’s (TTAB’s) decision to revoke the team’s “Redskins” trademarks on the grounds that the marks are disparaging to Native Americans. That TTAB decision was upheld in July 2015 by the US District Court for the Eastern District of Virginia and is currently on appeal at the US Court of Appeals for the Fourth Circuit. The Redskins filed an amicus brief urging the Supreme Court to hear their case alongside Tam’s (i.e., without waiting for the Fourth Circuit to rule), but the Supreme Court declined the request.

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© 2020 McDermott Will & EmeryNational Law Review, Volume VI, Number 301
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About this Author

Paul Devinsky, Intellectual Property Attorney
Partner

Paul Devinsky is a partner in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Washington, D.C., office.  He focuses his practice on patent, trademark and copyright litigation and counseling, as well as on trade secret litigation and counseling, and on licensing and transactional matters and post-issuance PTO proceedings such as reissues, reexaminations and interferences.

202-756-8369
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