A U.S. appeals court’s ruling Tuesday that a provision of a federal law banning offensive trademarks is unconstitutional could have an impact on the Washington Redskins’ legal battle to keep their own trademarks. Tuesday’s decision came from the U.S. Court of Appeals for the Federal Circuit, based in Washington, D.C., and they vacated the U.S. Patent and Trademark Office’s decision to refuse to register the name “The Slants,” used by an Asian-American band from Portland. The Redskins’ case, which saw their trademarks cancelled in 2014 by that office, is currently before a different court at the same level, the 4th U.S. Circuit Court of Appeals in Richmond, Virginia. That court could rule differently, but there’s a possibility this decision could be affirmed by the 4th Circuit or could prompt the Patent and Trademark Office to alter their own decision in the Redskins’ case.
The Slants’ case saw frontman Simon Shao Tam (not the Firefly character) argue that their name was used “as a way to reclaim the racial slur and should be allowed as an official trademark,” and that’s obviously very different from the Redskins’ own arguments. However, the court’s decision doesn’t hinge on that, but rather discusses if any federal government bans of offensive trademarks are constitutional. From the majority opinion:
Section 2(a) of the Lanham Act bars the Patent and Trademark Office (“PTO”) from registering scandalous, immoral,or disparaging marks (15 U.S.C. § 1052(a)).The government enacted this law—and defends it today—because it disapproves of the messages conveyed by disparaging marks. 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. That principle governs even when the government’s message-discriminatory penalty is less than a prohibition. …
Many of the marks rejected as disparaging convey hurtful speech that harms members of oft-stigmatized communities. But the First Amendment protects even hurtful speech.
The 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. Because the government has offered no legitimate interests justifying § 2(a), we conclude that it would also be unconstitutional under the intermediate scrutiny traditionally applied to regulation of the commercial aspects of speech. We therefore
vacate the Trademark Trial and Appeal Board’s (“Board”) holding that Mr. Tam’s mark is unregistrable, and remand this case to the Board for further proceedings.
The decision goes on to make it clear that this case only involves the disparagement provision of the Lanham Act, but also cites the Redskins’ case (Pro-Football, Inc. v. Blackhorse) as one where a trademark was cancelled under that provision. So, this is a ruling that could be very important for the Redskins. Interestingly enough, the Redskins could perhaps have filed their appeal to this court (as the Court of Appeals for the Federal Circuit usually hears trademark cases), and the plaintiffs argued that their appeal to the 4th Circuit should have been dismissed on those grounds, but that argument was rejected in October 2014. The 4th Circuit is on the same level as the Court of Appeals for the Federal Circuit, so it’s not bound to follow the other court’s ruling. However, this ruling could cause them to follow suit, or it could cause the patent office to reconsider its decisions in other cases involving the “disparagement” provision, including the Redskins’ one. We’ll see how this plays out.
