Group Disparagement Redux - The Slants & The Skins

Last year, this author discussed the decades-long battle that the NFL's Washington Redskins has waged against opposition to the continuing (and future) registration of several trademarks in its possession (here and here).  In those posts, this author high-lighted the ill-founded logic used in the Federal District Court judge's opinion (as overlapping with the TTAB decision at the USPTO).  In particular, when viewed in context, as is required of trademark usage in most-all litigation settings, the six trademarks at issue cannot reasonably be said to refer to a race or ethnicity of people, much less in a disparaging way that warrants cancellation of the marks under section 2(a) of the Lanham Act. In more recent months, the Court of Appeals for the Federal Circuit (CAFC) reversed the Trademark Trial and Appeal Board (TTAB) and its refusal to register the term "THE SLANTS" as used in association with the music services of an Asian-American band of the same name from Portland, OR.  In essence, the en banc panel of the CAFC (9 of 12 judges) determined that section 2(a) was an unconstitutional content restriction on free-speech. As a reminder, section 2(a) is the provision relied upon by challengers (over the years) to the Washington Redskins' various registrations.  Not surprisingly, the USPTO has appealed the decision in "THE SLANTS" case and awaits word whether the US Supreme Court will grant certiorari and attempt to resolve this matter.

Notably, in its petition for writ of certiorari, the USPTO essentially argues that section 2(a) of the Lanham Act does not restrict free speech by refusing to register marks that "disparage" people or groups but instead is a lawful criteria for eligibility on the federal trademark register within Congress' power.  The petition is well organized and argued, and references several seemingly favorable federal court cases in support of a very nuanced argument.

Whether the US Supreme Court will grant cert (and render a meaningful decision) is subject to considerable conjecture.  Despite the fine pedigree of the Supreme Court justices, many practicing intellectual property attorneys will bemoan the decisions of the Supreme Court on patent, copyright, and trademark cases.  Since this is being presented as a First Amendment challenge within a trademark context, there is a good likelihood that the Court will grant cert - but the ideological divide of the court will likely rear its head and result in a 4-4 split and the CAFC's en banc decision will stand until the next opportunity.

Whether the CAFC's decision should stand is a matter I will have to address in a future post.