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U.S. Supreme Court to Decide Free Speech Issue in THE SLANTS Trademark Case

It isn't very often that trademark cases make their way to the United States Supreme Court (SCOTUS). But yesterday, SCOTUS heard arguments in Lee v. Tam, a high-profile case that will decide whether the First Amendment overrides the ban on federally registering offensive or disparaging trademarks. The case was brought by an Asian-American rock band that was denied trademark registration for its band name, "The Slants." At issue is the constitutionality of Section 2a of the Lanham Act's prohibition against immoral, deceptive, and scandalous marks. The United States Patent & Trademark Office (USPTO) relies on Section 2a to refuse federal registration of marks that it deems to be offensive or disparaging.

It isn't very often that trademark cases make their way to the United States Supreme Court (SCOTUS). But yesterday, SCOTUS heard arguments in Lee v. Tam, a high-profile case that will decide whether the First Amendment overrides the ban on federally registering offensive or disparaging trademarks. The case was brought by an Asian-American rock band that was denied trademark registration for its band name, "The Slants." At issue is the constitutionality of Section 2a of the Lanham Act's prohibition against immoral, deceptive, and scandalous marks. The United States Patent & Trademark Office (USPTO) relies on Section 2a to refuse federal registration of marks that it deems to be offensive or disparaging.

Originally, the USPTO refused to register Simon Tam's mark for his band, THE SLANTS, finding it to be an anti-Asian slur and thus prohibited under Section 2a. The USPTO's Trademark Trial and Appeal Board upheld the refusal, but Tam appealed to the Federal Circuit where an en banc court initially affirmed and then reversed the lower decision, overturning a legion of case law that repeatedly validated the constitutionality of Section 2a. The Federal Circuit reasoned that the First Amendment still protects hurtful speech even if it "harms members of oft-stigmatized communities."

On the other hand, the USPTO argues that there is an important distinction between prohibiting disparaging speech and granting it the privilege and status that federal trademark registration confers. During arguments, the USPTO argued that "Nothing in the First Amendment requires Congress to encourage the use of racial slurs in interstate commerce." More specifically, the USPTO argued that the government is exempt from First Amendment protections under the government speech doctrine. That argument found legs with the SCOTUS in 2015 when the high court held that license plates were government speech and ruled that Texas did not violate the Constitution by refusing to issue plates with the Confederate flag.

Section 2a was also what brought down the Washington Redskins' federal registrations for the REDSKINS in 2014. Though the Washington Redskins are fighting their own Section 2a battle in the Fourth Circuit, they have also filed an amicus brief in Tam arguing that the "wildly inconsistent" application of Section 2a has resulted in federal registrations for marks like BAKED BY A NEGRO, RETARDAPEDIA, and YID DISH.

The trademark world waits for this SCOTUS decision with much anticipation. The implications of the Tam decision will be significant and far-reaching, potentially changing the entire landscape of how mark owners protect and enforce (what some may consider) disparaging and offensive brands.

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