On September 29, 2016, the Supreme Court of the United States granted a petition for certiorari to consider the constitutionality of a provision of the US trademark laws directed to the registrability of disparaging trademarks. Lee v. Tam, Docket No. 15-1293 (Sup. Ct., Sept. 29, 2016) (certiorari granted).

The sole question presented is whether the disparagement provision of the Lanham Act, 15 USC § 1052(a), which provides that no trademark shall be refused registration on account of its nature unless, among other things, it “[c]onsists of . . . matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” is facially invalid under the Free Speech Clause of the First Amendment.

The case concerns a rock band called The Slants founded by Simon Tam. Tam’s goal in naming his band was to reappropriate a derogatory term for people of Asian descent. Tam tried to register “The Slants” as a trademark but was refused on the basis that the name was “disparaging” within the meaning of § 1052(a).

In December 2015, a divided (9–3) en banc panel of the US Court of Appeals for the Federal Circuit (in addition to the opinion of the Court, four other concurring and dissenting opinions were issued) held § 1052(a) facially invalid (IP Update, Vol. 19, No. 1). In essence, the Federal Circuit ruled that disapproval of a mark based on its content violates the First Amendment right to free speech: “the First Amendment protects even hurtful speech.”

Practice Note: The Washington Redskins are challenging the Trademark Trial and Appeal Board’s (TTAB’s) decision to revoke the team’s “Redskins” trademarks on the grounds that the marks are disparaging to Native Americans. That TTAB decision was upheld in July 2015 by the US District Court for the Eastern District of Virginia and is currently on appeal at the US Court of Appeals for the Fourth Circuit. The Redskins filed an amicus brief urging the Supreme Court to hear their case alongside Tam’s (i.e., without waiting for the Fourth Circuit to rule), but the Supreme Court declined the request.