The trademark disparagement lawsuits continue. As some of our readers may already know, we’ve been tracking and writing about the Washington Redskins football team’s efforts to keep their federal trademark registrations for the REDSKINS name. We’ve also discussed and posted about the dance rock group called “The Slants” entering the fray at the U.S. Patent and Trademark Office (USPTO) and the Federal Circuit. Now, the next major legal battle in this ongoing trademark dispute is potentially set to take place before the United States Supreme Court.
A Quick Refresher on the Trademark Disparagement Saga
Both the Redskins and The Slants are fighting the USPTO’s refusal to allow their names on the federal register of trademarks because they violate the Trademark Act’s prohibition against registration of trademarks that “may disparage” certain persons, institutions, or beliefs. See 15 U.S.C. §1052(a) (a trademark shall be refused registration if it “[c]onsists of or 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”).
In 2014, the USPTO cancelled six federal trademark registrations for THE REDSKINS (which had been registered at various intervals between 1967-1990) because the USPTO considered the name “disparaging” to Native Americans at the time the registrations were issued. This ruling has been making its way through the courts ever since. The latest appeal is pending in the Court of Appeals for the Fourth Circuit, where the arguments have been fully briefed and the parties are awaiting oral argument.
Now, on to THE SLANTS trademark battle. In 2011, the
lead singer bassist* for The Slants, Simon Tam, applied to register THE SLANTS as a trademark for his band and its performances. The USPTO refused registration because it determined that the mark was “disparaging” to persons of Asian ancestry. Much like the Redskins matter, this case has been appealed since then. However, unlike the Redskins case, THE SLANTS already received a decision from a federal appeals court. In a landmark decision that was issued in December 2015, the Federal Circuit ruled that the Trademark Act’s disparagement clause violated the First Amendment, was unconstitutional, and as such, THE SLANTS should have been allowed to obtain a federal trademark registration. Nonetheless, in April 2016, the USPTO asked the Supreme Court to review the band’s victory. The band has also urged the Supreme Court to take the case under review due to the vast significance and potential ramifications of the legal issues at hand.
Will The Supreme Court Settle The Score?
Given the multiple requests to review The Slants decision before the Supreme Court combined with the Redskins case coming to a standstill in the Fourth Circuit, the football team decided to take matters into its own hands. Unsurprisingly, the Redskins have since urged the Supreme Court to review both cases at the same time, effectively bypassing the Fourth Circuit, as the football team’s case is “an essential complement to [The Slants] case.”
To get the ball rolling, the team filed its own petition to the Court asserting that, if the Supreme Court agrees to review The Slants case, the Court should review the Redskins case simultaneously without having to wait for the Fourth Circuit’s ruling on the team’s appeal. Additionally, the football team filed an amicus (“friend of the court”) brief in The Slants petition, urging the Supreme Court not to take the case because the matter was correctly settled when the band won its ruling last December in the Federal Circuit, or, at a minimum, to put The Slants petition on hold until after the Fourth Circuit resolves the team’s appeal.
Should the Court agree to review the trademark disparagement rejection issue at all, it seems to make sense that it would hear both cases together. The cases present the same issue in two different procedural contexts: The Redskins registrations were cancelled after they had been initially accepted by the USPTO and existed on the register for several years; while The Slants filed a new application to register their mark, which was refused. Moreover, the Redskins appeal raises further legal arguments (including additional constitutional issues) that are not present in The Slants case.
Both Supreme Court petitions have been fully briefed and distributed to the Justices for the next conference, which is scheduled to take place on September 26, 2016. This is going to be a particularly interesting one and we’ll definitely be keeping our eye on the Supremes to see whether they decide to review The Slants case and, if so, whether they will include the Washington Redskins case as well.
Be sure to stay tuned!
Image credit: Matthew Straubmuller
*Correction: Thanks to a gracious note from The Slants, we note that Mr. Tam is the band’s bassist, not lead singer.