On Monday, June 19, 2017, the US Supreme Court (“SCOTUS”) invalidated a 70-year-old provision of US trademark law that previously barred registration of “offensive” trademarks.   The high court held that the federal government cannot deny a trademark registration because some people might find the trademark offensive.  The case resulting in the landmark decision involved an Asian-American rock band who call themselves “The Slants.”  The United States Patent and Trademark Office denied the band’s application to register its name in 2011 based on the Lanham Act’s “disparagement clause,” which barred registration of any mark likely to disparage a person or group. The registration was refused on the ground that “Slants” is considered a pejorative term when directed toward Asian-Americans.  The band challenged the denial of its registration by filing a federal law suit raising the issue of whether or not the disparagement clause violated the First Amendment’s right to free speech. In December, 2015, the Federal Circuit Court of Appeals made waves in the legal landscape by agreeing with The Slants First Amendment arguments and declaring that the disparagement clause penalized protected speech by denying the substantial benefits of a trademark registration. And with Monday’s decision, SCOTUS agreed with the Federal Circuit.

The Slants case was not the first one to challenge the disparagement clause on constitutional grounds.  However, federal appellate courts have long held that the clause did not violate the First Amendment because it merely proscribed registration, not actual use, of an offensive trademark. The courts reasoned that because people were free to use offensive trademarks in commerce without registration, the disparagement clause did not violate anyone’s First Amendment right of expression.  Moreover, federal courts reasoned that the clause did not prevent enforcement of common law (unregistered) trademark rights.  Breaking from this precedent, SCOTUS’s decision represents a major shift in US trademark protection.

One notable benefactor of this decision is the National Football League’s Washington Redskins football team.  In June, 2014, the Trademark Trial and Appeal Board of the US Patent and Trademark Office (the “Board”) ordered that all registrations for the REDSKINS trademark be cancelled under the now-invalidated disparagement clause. That decision was the result of a decades-long battle with Native American heritage groups who found the “Redskins” name offensive.  In August, 2014, the Redskins organization challenged the Board’s decision to cancel its marks by filing a federal lawsuit. In addition to challenging the Board’s decision on evidentiary grounds, the Redskins’ federal lawsuit also challenged the constitutionality of the disparagement clause. The outcome of the Redskins’ federal case was stayed pending SCOTUS’s decision in The Slants case. Now that SCOTUS has held the disparagement clause to be unconstitutional, the Redskins case will very likely end with a win for the football team, and the REDSKINS registrations will remain registered with the US Trademark Office.

This decision opens the door for brand owners to consider whether marks previously used without registration may now be eligible for additional federal protection in the form of registration.  On the flip side, this shift will likely open the door to other avenues of trademark mischief and outright abuse. Our Trademark Team attorneys are ready to talk with you about what this shift in US trademark protection could mean for your brand. Contact us using the contact information below.

Tiffani Otey represents clients in all aspects of trademark protection, from selection of an available trademark, to protection of that mark under applicable federal and common laws, to enforcement of that mark against infringements and unauthorized uses. Otey also routinely counsels clients in domain name disputes, including retrieving domain names from cyber-squatters.

Randy Springer is the leader of Womble Bond Dickinson's Trademark team. He guides clients in selecting, clearing, registering, maintaining and defending trademarks. Randy acts as a trusted IP advisor to clients at all stages of the trademark life cycle, and is a North Carolina Board Certified Trademark Specialist. His clients include companies in the financial services/banking, consumer goods, textiles, automotive care, sporting goods and snack foods industries. In addition to his trademark practice, Randy also has experience counseling clients in copyright issues and trademark licensing