Trademark and copyright law are in a constant struggle with the right of free expression guaranteed under the First Amendment of the US Constitution. This is unavoidable. Copyright laws were enacted to protect authors of copyrighted works from others using their protected artistic and creative works. Trademark laws give the bearer of a registered trademark a monopoly of sorts on a word, phrase, logo, or other brand identifier with respect to certain goods and services against other parties who, beyond mere copying, would use their marks in a manner that is likely to cause confusion among relevant consumers. Maintaining the balance between the rights of copyright and trademark owners on the one hand, and the public at large, however, is harder than it looks.

A recent example of a major shift in this balance involves the Slants, an Asian rock dance band, that sought to register its name as a federal trademark. The trademark office refused registration because the name “Slants” is considered derogatory when applied to Asians and people of Asian descent, and the Lanham Act expressly prohibits the registration of marks that are immoral, deceptive, scandalous or disparage other persons or groups. On December 22, 2015, however, the US Court of Appeals for the Federal Circuit issued a ruling in In re Tam that struck down the USPTO decision, and held that the agency’s ban on disparaging marks violated the First Amendment. The appeals court further held that the US Government did not present a substantial government interest in suppressing the speech at issue, no matter how offensive the phrase.

The Federal Circuit’s decision in favor of the Slants sets up a conflict among the federal appeals courts regarding the constitutionality of the “anti-disparagement” provision in the Lanham Act. Most notably, and of high interest to football fans, is the ruling of the US Court of Appeals for the Fourth Circuit invalidating the trademark registration for the Washington Redskins trademark in reliance on the statutory provision that the Federal Circuit found to be unconstitutional. Such a conflict among federal circuit courts provides an enticing issue for review by the US Supreme Court, which has recently taken an interest in First Amendment cases, and tends to apply a very broad and expansive reading thereof (see, for example, the Citizens United decision, which recognized that corporations had First Amendment rights).

Recently, the Trademark Office sought an extension of time to seek Supreme Court review. It has not, however, asked for a stay of the Federal Circuit’s holding, and it has not issued the band’s trademark registration for its name. The Federal Circuit on March 30, 2016 denied the Slants’ request to compel the Trademark Office to issue its trademark registration. As a result, the Slants will not obtain their trademark registration until after conclusion of the Trademark Office’s efforts to appeal the matter to the Supreme Court.

If it does seek Supreme Court review, the government will need to articulate a substantial government interest that justifies making content-based distinctions among different trademarks (disparaging vs. non-disparaging). Traditionally, such interests are difficult to establish. The Federal Circuit was certainly not persuaded when the government argued unsuccessfully that it had compelling interests in dissociating itself from odious speech, fostering racial tolerance, and declining to use federal resources to spread ethnic and racial slurs.

Finally, it is important to remember that the USPTO’s denial of trademark registration did not prevent the Slants from using their name, or from protecting their trademark under federal trademark law as an unregistered trademark. Rather, the trademark office simply denied the band the benefits and privileges of a trademark registration. Whether there is a legally recognizable distinction under the First Amendment to be made between outright banning of speech based on its content, versus denying certain federally prescribed benefits and privileges will be an issue to watch.