Why it matters: In our February 2016 newsletter, we reported the Federal Circuit’s December 2015 en banc ruling in In Re Simon Shiao Tam that Section 2(a) of the Lanham Act—which bars the Patent and Trademark Office (PTO) from registering trademarks that are immoral, scandalous or disparaging—is an unconstitutional restriction on freedom of speech. On April 20, 2016, the PTO filed a petition for writ of certiorari with the Supreme Court asking it to overturn the Federal Circuit’s opinion and definitively rule on the constitutionality of Section 2(a). On April 25, 2016, Pro-Football, Inc. asked the Court to bypass the Fourth Circuit and consider its case in conjunction with Tam regarding the National Football League’s “Redskins” mark—which had been canceled by a Virginia federal court in July 2015 on the same Section 2(a) grounds.

Detailed discussion: We discussed the Tam case in our February 2016 newsletter. Simon Shiao Tam (Tam) is an activist and the front man for Oregon-based rock band, “The Slants” who has attempted to register the trademark “The Slants” with the PTO since 2011. Tam’s stated reason in the trademark application for wanting to name his band “The Slants”“ was “to ‘reclaim’ and ‘take ownership’ of Asian stereotypes.” Citing Section 2(a) of the Lanham Act, the examiner refused to register the mark because he found it “disparaging to people of Asian descent” and felt that “a substantial composite” of Asians would find the mark offensive. In relevant part, Section 2(a) reads “No trademark shall be refused registration…on account of its nature unless 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.”

The TTAB affirmed, and, on appeal, the Federal Circuit affirmed before sua sponte calling for en banc review of the constitutionality issue. On December 22, 2015 the en banc panel reversed, vacating and remanding the case back to the TTAB, holding that:

The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks. It cannot refuse to register marks because it concludes that such marks will be disparaging to others. The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of § 2(a) is unconstitutional.

The US PTO has continued to refuse to register “The Slants” mark, and on March 10, 2016, the PTO issued a new examination guide instructing trademark examiners to suspend examination on pending trademark applications involving marks subject to refusal under the “disparagement” provisions in Section 2(a) of the Lanham Act until “pending litigation” related to their constitutionality is resolved. On March 15, 2016, Tam filed a writ of mandamus with the Federal Circuit seeking an order that would legally require the PTO to register “The Slants” in accordance with the Federal Circuit’s en banc December 2015 decision, to which the Federal Circuit had ordered the PTO to respond. On March 30, 2016, the Federal Circuit issued an order that it would not force the USPTO to register the “The Slants” until either the deadline for the USPTO to file a petition for writ had passed or the Supreme Court denied the USPTO petition.

The USPTO filed a petition for writ of certiorari on April 20, 2016, in which the USPTO requests that the Supreme Court address the following question presented: “Whether the disparagement provision in 15 U.S.C. 1052(a) is facially invalid under the Free Speech Clause of the First Amendment.”

On April 25, 2016, Pro-Football, Inc. (PFI) filed an unusual pre-judgment petition for writ of certiorari with the Supreme Court asking it to consider its case—relating to the “Redskins” mark—together with Tam. We covered the latest developments in the long-running “Redskins” litigation in our February 2016 newsletter in conjunction with our discussion of Tam. To briefly recap, an Eastern District of Virginia judge in Pro-Football, Inc. v. Blackhorse upheld the TTAB’s ruling cancelling of six “Redskins” trademarks on the grounds they disparage Native Americans and rejecteing the football team’s First Amendment arguments. PFI appealed to the Fourth Circuit in October 2015, and PFI requests that, if the Supreme Court agrees to review Tam (which PFI urges the Court not to do), the Court should bypass the Fourth Circuit and agree to hear PFI’s case as a “companion” to Tam due to the identical constitutional issue in both cases.

We will report again once the Supreme Court grants or denies either petition.

See here to read the 4/20/16 Petition for Writ of Certiorari in Lee v. Tam.

See here to read the 4/25/16 Petition for Writ of Certiorari Before Judgment in Pro-Football, Inc. v. Blackhorse.

For more on this subject, see here to read the article in Manatt’s 2/15 newsletter under “Federal Circuit: Disparaging Trademarks Are Free Speech.”