Why it matters: On September 29, 2016, the Supreme Court granted certiorari in Lee v. Tam, where it will review the question of whether Section 2(a) of the Lanham Act—which bars the U.S. Patent and Trademark Office from registering "disparaging" trademarks—is an unconstitutional restriction on free speech. The trademark at issue in Tam is "The Slants," which an Asian rock band attempted to register but was denied because the proposed mark was considered "disparaging" to Asians under Section 2(a). The case is being closely watched by trademark practitioners, the government and the courts alike, not least of which is the Fourth Circuit with respect to the case involving the mark "Washington Redskins" currently pending before it.

Detailed discussion: On September 29, 2016, the Supreme Court granted certiorari in Lee v. Tam, where it will review the following question presented: "Whether the disparagement provision in 15 U.S.C. 1052(a) [Section 2(a) of the Lanham Act] is facially invalid under the Free Speech Clause of the First Amendment." The case is currently being briefed, including the filing of numerous amici briefs, and as of this writing, oral argument has not yet been scheduled.

The trademark at issue in Tam is the "The Slants," which an Asian rock band unsuccessfully attempted to register. In December 2015, the Federal Circuit, sitting en banc, held Section 2(a) to be an unconstitutional restriction on free speech. If upheld by the Supreme Court, the case will have a far-reaching impact on how the U.S. Patent and Trademark Office (PTO) registers trademarks going forward and on pending cases where a "disparaging" trademark is at issue. Perhaps the most high profile of these pending cases is Pro-Football, Inc. v. Blackhorse, currently before the Fourth Circuit involving variations of the mark "Washington Redskins" and which the Fourth Circuit recently put on hold pending the Supreme Court's decision in Tam.

In order to understand what got us to this point, a recap of the relevant statute and the procedural history of both Tam and Blackhorse follows.

Section 2(a) of the Lanham Act

The statute at issue in Tam is Section 2(a) of the Lanham Act, which provides in relevant part that "[n]o trademark … shall be refused registration … on account of its nature unless it—(a) Consists 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 ... "

Procedural History of Lee v. Tam

This case came up to the Supreme Court from the Federal Circuit, where on December 22, 2015, an en banc court held in In re Simon Shiao Tam that Section 2(a) of the Lanham Act is an unconstitutional restriction on free speech. We covered the Federal Circuit's en banc decision in Tam in our February 2016 Newsletter under "Federal Circuit: Disparaging Trademarks Are Free Speech."

To briefly review, the Tam case involved an individual by the name of Simon Shiao Tam (Tam), the "front man" for a dance-rock band, attempting to register the trademark "The Slants" (the band's proposed name) with the PTO in 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. The PTO's in-house Trademark Trial and Appeal Board (TTAB) affirmed, disqualifying the mark for registration under Section 2(a) because, among other things, " '[t]he dictionary definitions, reference works and all other evidence unanimously categorize the word "slant," when meaning a person of Asian descent, as disparaging,' and because there was record evidence of individuals and groups in the Asian community objecting to Mr. Tam's use of the word." Tam appealed the TTAB's ruling to the Federal Circuit.

In the first go-round before the Federal Circuit, the court found the mark "The Slants" to be disparaging and affirmed the TTAB's disqualification of the mark from registration. The Federal Circuit also held that its precedent foreclosed Tam from raising a First Amendment challenge to Section 2(a) because, even though the PTO would not register the mark "The Slants," nothing was stopping Tam from using the name for his band, and thus the First Amendment was not implicated. The Federal Circuit then sua sponte ordered rehearing en banc and asked the parties to brief the following issue: "Does the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate the First Amendment?" In addition to the parties' briefs, ten amicus briefs were filed, and the en banc Federal Circuit heard oral argument on October 2, 2015.

In its December 22, 2015, opinion, a divided Federal Circuit began by agreeing up front that it found the mark "The Slants" to be disparaging and likely to cause offense. After considerable analysis, however, the panel held that "[t]he 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."

Procedural History of Pro-Football, Inc. v. Blackhorse

To briefly review the latest iteration of this long-running litigation involving the mark "Washington Redskins," in July 2015 the Eastern District of Virginia upheld the TTAB's ruling cancelling the registrations of six Redskins trademarks on the grounds that they disparaged Native Americans in contravention of Section 2(a) of the Lanham Act. The court rejected the trademark registrant's arguments that Section 2(a) violates the First Amendment, basing its decision on two lines of reasoning, namely that (i) the First Amendment is not implicated by the operation of Section 2(a) and (ii) federal trademark registration constitutes government speech and is thus exempt from First Amendment scrutiny. Both lines of reasoning were later rejected by the Federal Circuit en banc in Tam.

In support of its "government speech" finding, the district court cited to the 2015 U.S. Supreme Court case of Walker v. Texas Division, Sons of Confederate Veterans involving the Texas Department of Motor Vehicles' rejection of a specialty license plate featuring a confederate flag design on the grounds that the design was "offensive to any member of the public." In that case, the Supreme Court held that license plates are a form of government speech, exempt from the First Amendment, and subject to content restrictions by the government. The en banc Federal Circuit in Tam differentiated Walker, finding that federal trademark registration is not the same as a state-run specialty license plate program and is therefore not government speech.

Pro-Football, Inc., appealed the case to the Fourth Circuit in October 2015. After the petition for certiorari was filed with the Supreme Court in Tam, Pro-Football, Inc., filed a rare "certiorari before judgment" petition with the Court which, if granted, would have allowed Blackhorse to be joined with Tam for Supreme Court consideration, even though the Fourth Circuit had not yet ruled in the case. The Supreme Court denied Pro-Football, Inc.'s petition on October 3, 2016, but on October 19, 2016, the Fourth Circuit agreed to postpone Blackhorse until after the Supreme Court's decision in Tam as the Tam decision could directly affect the outcome in Blackhorse.

We are awaiting the Supreme Court's decision in Tam with avid interest and will report back.