Of rock bands, football teams, and disparaging trademarks

It’s usually interesting when a trademark case makes the news, and the court decision released on Tuesday this week is no exception.  The United States Court of Appeals for the Federal Circuit held that a provision of the U.S. trademark statute (known as the Lanham Act) is unconstitutional. Specifically, the court struck down the section of the Act that allows the Trademark Office to deny registration to a trademark that it considers to be “scandalous, immoral, or disparaging.”

Nine of the twelve judges on the court signed an opinion which begins about as strongly as an opinion can:

“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.”

You can read the whole decision here.

This decision made the news mainly because the disparagement provision of Section 2(a) is the law that a federal judge in Virginia relied on to approve the PTO’s cancellation of the Washington Redskins’ registration of the mark REDSKINS. That decision last July by the U.S. District Court in Virginia didn’t stop the Redskins from continuing to use the mark (or from leading the NFC East), but it did take away from them the very significant protections provided by federal registration of a mark (such as allowing U.S. Customs to exclude or seize infringing imports on request).

The case decided Tuesday doesn’t directly affect the Redskins case. The Redskins weren’t involved in this one, although their case was referenced several times. Rather, Tuesday’s case involved a Portland, Oregon-based rock bank called “The Slants.” The members of The Slants are Asian-Americans, and say they intended the name to be a comment of some sort on social conditions in the U.S. However, under the PTO’s rules, the question in deciding the disparagement issue isn’t what is intended by the words or images used in a mark, but how those words and images are taken by the group referred to at the time the registration is filed. If  at the time the band filed to register its trademark, a significant portion of Asian-Americans considered the term to be disparaging, then under PTO rules, the mark must be denied registration.

According to Tuesday’s decision, that determination violated the band’s first amendment rights. The reasoning the court used would apply just as readily even if the band had admitted that it intended to be disparaging. The government, the court said, cannot deny an applicant a right to which he is otherwise entitled merely because the government disagrees with the viewpoint expressed.

If this reasoning were applied to the Redskins case, it would result in a reversal of the decision cancelling the REDSKINS registration. But, we don’t know yet if that will happen. The Redskins case is on appeal, but it will be heard by the Fourth Circuit Court of Appeals, not the Federal Circuit. Different circuits routinely reach different outcomes on novel constitutional questions that come before them, and it takes a further appeal to the Supreme Court to straighten it out. However, the Federal Circuit is very influential in intellectual property matters, so we’ll see.

In the meantime, it’s a good reminder that your band’s name — if you have a band — is your trademark. If you plan to get big, registration might be advisable, and it also wouldn’t hurt for the band members to enter a clear agreement defining who owns the band’s name, so the members don’t end up fighting over it like, oh, just about every band from the ’70s and ’80s.


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