The U.S. Patent and Trademark Office (USPTO) has filed a writ of certiorari with the U.S. Supreme Court after a divided en banc Federal Circuit Court of Appeals struck down its rule prohibiting the registration of offensive trademarks on constitutional grounds. The USPTO had denied an Asian-American band's attempt to register the trademark "The Slants" (intended to "take ownership" of offensive stereotypes about Asians), based on a prohibition against registering "disparaging" marks.

After a panel of the Federal Circuit affirmed the denial, the band appealed on First Amendment grounds. The en banc court reversed, overturning decades of precedent. "It is a bedrock principle underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys," the court wrote. "That principle governs even when the government's message-discriminatory penalty is less than a prohibition."

Now the USPTO has requested that the U.S. Supreme Court take the case.

"Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), provides that no trademark shall be refused registration on account of its nature unless it '[c]onsists of … matter which may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute,'" the agency wrote in its petition for a writ of certiorari. "The question presented is as follows: Whether the disparagement provision in 15 U.S.C. 1052(a) is facially invalid under the Free Speech Clause of the First Amendment."

The disparagement clause does not restrict free speech, the USPTO told the justices, because trademark rights are acquired through common-law use and the government is not prohibiting speech. While the federal registration system may confer benefits on owners, it does not actually prevent trademark holders from using non-registered marks to distinguish their goods or services in commerce.

"Section 2a does not prohibit any speech, proscribe any conduct or restrict the use of any trademark. Nor does it restrict a mark owner's common-law trademark protections. Rather, Section 2a directs the PTO not to provide the benefits of federal registration to disparaging marks," the USPTO argued in its cert petition. "The court of appeals disregarded this court's teaching that, when Congress does not restrict private speech or conduct, but simply offers federal benefits on terms that encourage private activity consonant with legislative policy, it has significant latitude to consider the content of speech in defining the terms on which the benefits will be provided."

The disparagement clause at issue is the same relied upon by the USPTO to invalidate the trademark for the Washington Redskins. In that case, a group of Native Americans pointed to Section 2a to argue that the National Football League team's marks disparaged their institutions and beliefs. That case is currently pending on appeal in the Fourth Circuit.

To read the writ of certiorari in Lee v. Tam, click here.

Why it matters: The case has significant implications for trademark law. If the Court were to accept the case and reverse the Federal Circuit's en banc opinion, the status quo would be restored, the Slants could not register its mark and the Redskins would lose its registration. Should the justices agree with the en banc Federal Circuit's free speech rationale, it could open the door to a variety of new trademark applications.