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January 29, 2016

Changes to the Law of Disparaging Trademarks

By Lindsey Leibowitz

Recently, the U.S. Patent and Trademark Office (the “PTO”) has been engaged in several cases regarding the constitutionality of the prohibition on registering “disparaging” trademarks. Section 2(a) of the Trademark Act prohibits registration of any mark which “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.”

Most recently, the Federal Circuit Court declared that it is unconstitutional for the PTO to deny the registration of what it deems a disparaging trademark. Specifically, the Circuit’s ruling in In re Tam allowed Simon Tam’s Asian dance band, The Slants, to register its name despite the PTO’s earlier determination that the name was ethnically disparaging. The court said that the First Amendment right to free speech is more important than preventing disparaging trademarks from being registered. The federal circuit court limited its decision to disparaging marks, and did not determine whether preventing offensive or scandalous registrations would also be deemed unconstitutional.

This ruling may have profound effects on the Washington Redskins. The Redskins had their trademark revoked in 2014 because many feel the term is an ethnic slur toward Native Americans. The Washington Redskins case is scheduled to be heard on appeal by the 4th Circuit. If the 4th Circuit follows the Federal Circuit court opinion, and concludes that the First Amendment’s protection of free speech trumps the PTO’s registration policies, the lower court’s decision will be reversed and the law on disparaging trademarks will likely be forever changed. If, however, the 4th Circuit agrees with the lower court decision revoking the Redskins name, there will be a split amongst the federal courts which might result in the matter being heard by the Supreme Court.

It is possible that the federal circuit court’s decision could also lead to others whose marks were previously rejected for federal registration on the basis that they are “disparaging,” reapplying for protection. In addition, it is also possible these changes may impact those seeking registrations for businesses that are still considered illegal activities on a federal level, such as marijuana dispensaries.

There are many benefits to owning a trademark registration, and the Circuit Court’s decision may open the door to federal protection for marks that could not previously have been registered because they were deemed disparaging or offensive.

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