Last week, the United States Patent and Trademark Office (“USPTO”) in Lee v. Simon Shiao Tam, asked the United States Supreme Court to reverse the decision of the United States Federal Circuit, which held that trademark law’s ban on “disparaging” trademark registrations violates the First Amendment. On December 22, 2015, we discussed the underlying decision of the Federal Circuit in Tam. The Tam decision was expected to have broad implications, especially in light of a contradictory decision by the United States District Court for the Eastern District of Virginia, which affirmed the USPTO’s cancellation of six “REDSKINS” trademark registrations owned by the Washington Redskins football franchise, Pro-Football, Inc. (“PFI”). The District Court held that the registrations were “disparaging” to the Native American population.

PFI initially appealed the District Court’s decision to the Fourth Circuit, and the parties are currently awaiting a date to appear for oral argument.

On the heels of the USPTO’s petition for certiorari, this week PFI filed a rare prejudgment petition for writ of certiorari to the United States Supreme Court, requesting that the High Court hear its appeal before the Fourth Circuit renders a decision. PFI explained in its petition that its case “is the paradigmatic candidate for certiorari before judgment because it is a necessary and ideal companion to Tam.” The two cases are undoubtedly similar and call into question the same provision of seemingly well-settled trademark law. The respondents in the Tam and PFI cases have 30 days from the petition docketing dates to file response briefs to the petition for writ of certiorari. Thereafter, the justices will consider whether to grant either and/or both petitions.

Lee v. Simon Shiao Tam was docketed in the United States Supreme Court as Case No. 15-1293 on April 20, 2016.

Pro-Football, Inc. v. Amanda Blackhorse, et al. was docketed in the United States Supreme Court as Case No. 15-1311 on April 26, 2016.