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  • Scott Sisun and Cameron Meindl

SCOTUS makes Tam decision, forcing USPTO to update guidelines

As a little background, on June 19, the Supreme Court issued its highly-anticipated decision regarding disparaging trademarks in the Matal v. Tam case. 2017 U.S. LEXIS 3872 (U.S. June 19, 2017). As previously discussed in this space, the case revolved around the synth-pop band The Slants, whose trademark application for their band name was refused by the USPTO under a Lanham Act provision prohibiting trademarks that may “disparage . . . or bring . . . into contempt” any “persons, living or dead.” The band’s lead singer, Simon Tam, explained that the band (made up entirely of Asian-Americans) had taken the name as a way of “reclaiming” the ethnic slur and turning it into something positive. Tam thus began a seven-year legal battle claiming that his free speech rights had been violated, culminating in the Court’s unanimous decision.

In the opinion authored by Justice Samuel Alito, the Court ruled that the Lanham Act provision regarding disparaging trademarks violated the Free Speech Clause of the First Amendment, writing, “[The provision] offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

The Court addressed, among other issues, whether the disparagement clause violates the First Amendment right to free speech. In its analysis, the Court looked at the government’s primary argument that trademarks are “government speech” and thus not subject to the Free Speech Clause. Calling this argument “far-fetched,” the Court wrote, “[A trademark examiner] does not inquire whether any viewpoint conveyed by a mark is consistent with Government policy,” explaining that the actual standard for registration is that “If the mark meets the Lanham Act’s viewpoint-neutral requirements, registration is mandatory.” Alito pointed out humorously, “If trademarks represent government speech, what does the Government have in mind when it advises Americans to ‘make.believe’ (Sony), ‘Think different’ (Apple), ‘Just do it’ (Nike), or ‘Have it your way’ (Burger King)?”

In concluding its thoughts on the matter, the Court noted that freedom of speech within trademarks is not only important for the flow of commerce, but also for preserving the Constitution. Justice Alito explained, “Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.’”

While the Court’s ruling is a victory for Tam and The Slants, the decision might also prove to be beneficial to the Washington Redskins football team, who have had six trademarks canceled by the PTO due to the disparaging nature of its name to Native Americans. It is now likely that the team’s attorneys will use the Court’s decision to appeal the cancellation of their marks. One team attorney even commented to the New York Times that the ruling "resolves the Redskins' longstanding dispute with the government." Although Tam does not support the Redskins’ lawsuit, he has no regrets about his case and its potential impact. In an interview with Rolling Stone, he explains,

“When I look and see a law that's using people's identities against them, like when the government uses race, sexuality, gender as a factor to deny them rights… I felt that was a burden on already burdened communities that had the short end of the stick for the last several centuries. When I thought more deeply where those decisions should be made, I wanted them to be made in our own communities rather than be left to the government, which oftentimes gets it wrong. So I don't see it as directly a trademark case or a free speech case. I think of it more as social equity and social justice."

In the wake of the Supreme Court’s ruling, the USPTO has made adjustments to its examination guidelines for prospective trademarks, which have now been updated to read that “the portions of Trademark Manual of Examining Procedure (TMEP) §1203 that relate specifically to examination under the disparagement provision no longer apply.”

However, there are still complications that the examiners must deal with when dealing with Section 2(a) of the Lanham Act, which also prohibits trademarks that “consist of or comprise immoral or scandalous matter.” Like the disparagement provision before it, this “scandalousness provision” is currently under the review of the Federal Circuit in the In Re Brunetti case (No. 15-1109). As the Federal Circuit’s decision is still pending, the USPTO has decided to continue examining applications in compliance with the scandalousness provision and maintain the suspension of applications based on the provision until a decision in the Brunetti case is made.

In the meantime, the Federal Circuit has requested that the parties involved in the Brunetti case submit briefs on how the Tam decision should influence the Circuit’s decision regarding the scandalousness provision.

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