US Supreme Court To Decide If USPTO Refusal To Register Trademarks Breaches Free Speech

The US Supreme Court agreed on 29 September to take up the question of whether the Lanham Act, which allows the US Patent and Trademark Office to refuse to register disparaging trademarks, conflicts with the First Amendment right to free speech.

The issue involves two cases, Pro-Football Inc. v. Blackhorse and Lee v. Tam, and a complicated history. The grant of certiorari applies only to the latter case.

In 2006, a group of Native Americans petitioned the US Patent and Trademark Office (USPTO) for cancellation of six federal registrations for trademarks that included the name “Redskins” (such as the Washington, DC football team), a June 2014 USPTO fact sheet said. The Trademark Trial and Appeal Board agreed that the term was disparaging of Native Americans, when used in relation to professional football services, at the times the various registrations involved in the proceeding were issued. The board ordered the trademark registrations to be cancelled. The decision meant that, if not appealed or if affirmed on appeal, Pro-Football would lose the legal benefits conferred by the registration, but wouldn’t have to change or stop using the trademarks, the agency said.

Pro-Football appealed the TTAB ruling to the Eastern District Court in Virginia, arguing among other things that the denial of registrations breached its First Amendment right to free speech. The organisation notified the US Attorney General of its intent to challenge the Lanham Act, and the US intervened to defend the act’s constitutionality on the ground that the Redskins trademarks aren’t protected speech. The district court affirmed the TTAB ruling, and Pro-Football appealed to the US Court of Appeals for the Fourth Circuit, where the case is pending.

In the meantime, another case involving alleged disparagement under the Lanham Act was working its way through the system. As noted in a July 2015 Morrison & Foerster IP newsletter article by attorneys Jennifer Lee Taylor and Sabrina Larson, USPTO trademarks examiners twice refused to give Simon Tam the trademark “The Slants” for his Asian-American dance-rock band. The office denied the registration on the grounds that the likely meaning of the mark was “a negative term regarding the shape of the eyes of certain persons of Asian descent.”

Tam appealed to the TTAB, which backed the examiner. While Tam didn’t raise the free speech issue, the board stressed that the refusal to register the mark didn’t affect his right to use it, so no free speech rights were abridged, the MoFo newsletter noted. The US Federal Circuit agreed, but the judge who authored the decision wrote a separate statement with “additional views” on the First Amendment issue, arguing that it’s time for the Federal Circuit to revisit an earlier holding on the constitutionality of Section 2(a) of the Lanham Act. In April 2015, the Federal Circuit of its own accord vacated its earlier decision and ordered a rehearing, at which it invalidated the anti-disparagement provision on constitutional grounds and sent the case back to the TTAB.

The USPTO then asked the Supreme Court to review the Federal Circuit’s decision in Tam. Soon after, and despite the fact that the Pro-Football case has yet to be heard by the Federal Circuit, Pro-Football asked the high court to grant certiorari and hear its case in conjunction with Lee v. Tam.

Supreme Court filings in Pro-Football are available here: http://www.scotusblog.com/case-files/cases/pro-football-inc-v-blackhorse/. Filings in Tam are available here: http://www.scotusblog.com/case-files/cases/lee-v-tam/.

Certiorari normally isn’t sought before an appellate judgment because the “odds of a grant are already slight and there must be extraordinary circumstances to warrant a litigant short circuiting the appellate process and going straight to the Supreme Court,” Foley Hoag (New York) IP litigator Peter Sullivan wrote in a 28 April 2016 note (available here). Pro-Football claimed those circumstances were present because the issues in its and the Tam case are complementary and should be decided together, and because Pro-Football has raised other constitutional issues that should be addressed alongside the issued raised in Tam, he wrote.

Tam Issue “Somewhat Unique”

Tam itself is important because the Supreme Court will be weighing whether to strike down the provision that the Trademark Office has used to regulate disparaging content, Sullivan told Intellectual Property Watch. Without that tool, the office “will have much greater difficulty refusing registrations for racially disparaging and sexually explicit content,” he said.

The overriding question in the case is “somewhat unique” under US law because the First Amendment provides an express and very broadly enforced protection of speech, said Phillips Nizer (New York) business and IP law attorney Alan Behr. To the extent that trademarks represent speech, they’re commercial speech, for which First Amendment safeguards are historically narrower than protections for political and religious speech, which could indicate that the court might apply a narrower interpretation, he said in an email.

The high court could also conclude that, because trademarks have historically been used in the US without registration, and because unregistered trademarks continue to enjoy broad rights of protection, the failure to register does not impinge on the right of use and so doesn’t affect free speech, Behr said.

Moreover, the fact that the anti-disparagement requirement of the USPTO has long been applied unevenly could be a factor in the decision as well, he said. Since the purpose of a trademark is to “affirm and sell” rather to disparage, it could be argued that if an Asian-American rock group believes that calling itself The Slants is of benefit to it, it could be argued that the USPTO should not be able to impose its own view, Behr added.

Silence on Pro-Football “Interesting”

The decision to hear the Tam case “is not wholly unexpected,” said Fitzpatrick, Cella, Harper & Scinto (New York) partner Tim Kelly, who chairs the firm’s trademark practice group. The fact that the USPTO has suspended action on pending trademark applications that would be refused under the challenged statute “underscores the need for timely clarification,” he said.

[Updated:] Kelly noted that the court’s silence on Pro-Football was “interesting” because the case raised issues not immediately presented in the Tam case but which are nevertheless important from the perspective of the challenged law, such as whether the prohibition against disparagement was intended to apply only to individuals or, more broadly, to collective groups such as American Indians or Asians.

The Supreme Court subsequently denied certiorari in Pro-Football on 3 October. That’s not surprising given that the court didn’t reference the case when it took on the Tam case, and given the fact that Pro-Football is still awaiting a decision by the Fourth Circuit, Kelly said. The question will now be how the lower court elects to handle Pro-Football’s current appeal–whether to render a decision or wait for possible guidance from the Supreme Court’s decision in Tam, he told Intellectual Property Watch. [end update]