I attended the Supreme Court argument for Lee v. Tam in January 2017 and, let me tell you, it was worth standing in the cold for four hours. The Supreme Court has not yet ruled on the trademark issues at play, but when they do, it will set new precedent for trademark disparagement.
Here are the details: after more than six years, an Asian-American band will finally learn whether they have a federal trademark on their name “The Slants.” The Supreme Court heard Lee v. Tam in January to answer the question of whether the USPTO can deny trademark registration because a mark is immoral, scandalous, or disparaging. Beyond this case, the subject of scandalous trademarks has been a hot topic in the United States, including the recent scrutiny over the Washington Redskins football team name. Lee v. Tam will provide serious guidance in this area once the Supreme Court rules.
The dispute began in 2011 when the U.S. Patent and Trademark Office (USPTO) denied The Slants, a Portland based band, trademark registration for their band name. The USPTO refused registration under section 2(a) of the Lanham Act, which states that a trademark can be refused if it “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.” The USPTO refused the mark after deciding that the term was disparaging to people of Asian descent. The Slants appealed the decision, arguing that this section of the Lanham Act violated their First Amendment right to free speech. The Federal Circuit agreed with the Slants and found section 2(a) to be unconstitutional, and the Supreme Court granted certiorari in 2016 to answer this question.
The arguments before the Supreme Court were interesting to say the least. Deputy Solicitor General Malcolm Stewart argued for the government and appeared to struggle with some questions from the justices, such as the issue of inconsistency with which section 2(a) is applied by the USPTO. Stewart’s response was that while a few disparaging marks are bound to slip through with so many applications, the truly insulting ones would be found and rejected. This argument did not seem to resonate with the justices, nor did the arguments that the PTO wanted to avoid disparaging marks because they are “distracting” to consumers. Several of the justices found that the practice of eliminating negative views versus positive ones seemed to be “view-based” discrimination.  By the time Stewart sat down, I thought The Slants had it in the bag. Not quite.
Attorney John Connell argued for The Slants and took a very black and white stance to what could be trademarked, which is to say, everything. Connell demonstrated a rather blasé disregard of necessary restrictions on trademarks (e.g., generic terms), but when the justices questioned him further on this stance, he did not budge. Can you trademark a term criticizing a competitor’s product? Or a statement such as “Trump is a thief”? Forget libel laws because those can be trademarked according to Connell.  But as Justice Sotomayor put it, “That makes no sense.” It seems the justices may have found his all-encompassing approach too far reaching with his one worded answers to their complex questions.
Either way the Supreme Court rules, the outcome will have consequences, as the Redskins case is on hold until Lee v. Tam is decided.