On Thursday morning the Supreme Court’s new docket moved ever closer with the announcement of eight new cases they would be hearing. One of those cases has seemed like an inevitability for a long time, and it’s got a lot of cases riding on it.
Lee v. Tam, the long fought battle by rock band The Slants to get the USPTO to register their name, is finally coming to the nation’s high court, bringing with it questions about reclamation, the First Amendment, and “disparaging remarks.” They’ve been fighting this battle since 2013, when the PTO initially denied their request on the grounds that their name qualified as a “disparaging remark.” But as the band has always maintained (complete with manifesto on their website) their aim has always been to put their racial identity front and center in an industry where Asians are traditionally underrepresented.
Is there room in modern IP law for reclaiming slurs by those marginalized by them? It’s a rather blunt instrument, and it’s possible that kind of nuance can’t be written into the law as is. But depending on what the justices decide this term, there’s a lot of other cases that could benefit (or not) from a decision.
The Washington Slurs
It’s been a long-fought battle, but last year Native Americans received two decisions cancelling six of the Washington, D.C. NFL team’s marks: The first from the USPTO granting a petition, the next from an appeals court upholding the initial ruling. But the NFL has refused to give up the fight. They’ve thrown all sorts of strategies at the wall to see what will stick, including lumping themselves in with some truly unfortunate and vulgar marks (feel free to peruse the brief yourself) as well as the Tam case.
Their piggy-backing may feel a bit cheap (they are not trying to reclaim a slur levied against them for years, just protect the mark, name, and “tradition” of their football team) but they are technically not wrong that the issues are at least linked, as Andrea Shannon writes for The Brand Protection Blog:
The Redskins’ case differs from Lee v. Tam in that it deals with the cancellation of a trademark registration instead of an initial refusal. Taking the Redskins’ case, the team argues, would allow the Supreme Court to consider the application of the disparagement clause over a broad spectrum of facts. Id. at 14. Does the risk of cancellation impose a higher burden on a trademark owner’s free speech rights than an initial refusal? Should the government’s interest in dissociating itself from disparaging marks apply in the context of cancellation? These are the issues the Redskins say they can bring to the constitutional conversation.
They also appeal two additional constitutional issues—whether the Lanham Act’s disparagement clause is impermissibly vague under the Fifth Amendment and whether cancelling a trademark registration on disparagement grounds several years later is a violation of procedural due process. What they don’t challenge, however, is the lower court’s affirmation that the Redskins’ marks are disparaging.
Though at least at this point it seems the justices will not be taking on the NFL team’s petition alongside The Slants’ (which would mean they leap frog an appeal at the Fourth Circuit), a decision upholding the decision to allow the band to register their mark, overturning the 70-year-old Lanham Act preventing the registration of disparaging remarks on First Amendment grounds, could mean good things for the NFL’s fight for their offensive mark.
Similar to the NFL’s case, In re: Brunetti, the PTO denied an application to register the brand name “FUCT” for apparel, on the grounds that it was too scandalous. Though Erik Brunetti holds that it merely stands for “friends u can trust,” the PTO was not moved.
But at this point it concedes that The Slants decision at the Federal Circuit was broad enough with its First Amendment concerns that though the marks were denied for different reasons, they could no longer hope to defend “scandalous and immoral” bans either.
“Although a court could draw constitutionally significant distinctions between these two parts of [the Lanham Act], we do not believe, given the breadth of the court’s Tam decision and in view of the totality of the court’s reasoning there, that there is any longer a reasonable basis in this court’s law for treating them differently,” the government wrote in their appeal earlier this year.
In March the office released Examination Guide 01-16 to address the impact of federal court decisions on their process, and noted that “any suspension of an application based on the scandalousness provision of Section 2(a) will remain in place until the Federal Circuit issues a decision in Brunetti, after which the USPTO will re-evaluate the need for further suspension.”
Which is really representative of where the trademark office is at this point: They’re awaiting decisions just as much as the mark holders are. If the courts hold up Tam Section 2(a) of the Trademark Act, which prohibits registration of marks on grounds of immorality, scandalous nature, or as disparaging, is no more.
And some say, good riddance. As anyone who’s been involved in filing an application with the PTO can tell you, it is a bit of a crapshoot. The process has an opaque and uneven nature, that leaves most on the outside looking at results that seem incongruous: “HAVE YOU HEARD SATAN IS A REPUBLICAN?” was deemed too offensive in 2010, but two years later approved the register for “THE DEVIL IS A DEMOCRAT.” The USPTO is ok with a British sexual term when it’s being applied to beer, but the same word was “too scandalous” for a clothing line. Meanwhile The Slants were rejected from the get-go, while the opposition to the NFL’s “Redskins” mark took years and a challenge to finally get it rescinded.
A court decision—and, as noted above, seemingly any decision—will hopefully bring some logic to the PTO’s process. There may be no way for The Slants to keep their fight nuanced, but swinging this double-edged sword around could just save USPTO clarity yet.