Managing IP is part of the Delinian Group, Delinian Limited, 8 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Division over disparaging marks

The Slants 168

The trademark world has been closely following Lee v Tam, the dispute over the constitutionality of the USPTO's provision barring the registration of disparaging marks

The case was granted cert by the Supreme Court in September. Betty Anne Morgan, of counsel at Paz Horowitz, and Bill Barber, a partner at Pirkey Barber, will discuss the case in a session today at the AIPLA Annual Meeting.

slants

The Tam case concerns the name of the band: The Slants. Simon Tam, the bassist and a founding member of the Asian-American band, attempted to register a trademark for "The Slants." The USPTO's Trademark Trial and Appeal Board (TTAB) affirmed the office's denial of the mark. Its rejection was based on Section 2(a) of the Trademark Act, which bars the registration of "disparaging" marks. The Supreme Court is being asked whether the provision is "contrary to the First Amendment."

The Federal Circuit en banc ruled last December that the bar against registering disparaging marks violated the First Amendment, and the USPTO appealed to the Supreme Court.

Barber, who will argue that the provision is constitutional is concerned that "without this provision, the register is going to opened up to the most vile, racist trademarks imaginable," and will become "cluttered with these marks that the US government is going to have to send to WIPO or foreign governments."

Morgan of Paz Horowitz doesn't believe that doing away with Section 2(a) will "have that much effect." She says that there aren't many applications for scandalous or disparaging marks and that, for most brand owners, the possibility of "market backlash" is discouragement enough. Rather, registrants of such marks will be "people like the band The Slants, artists and people with products that are more fringe," such as the apparel brand "FUCT," which has also appealed the USPTO's denial of its trademark registration.

The closely-watched Tam case also has implications for the even more buzzed-about Redskins case, which is pending at the Fourth Circuit. The Redskins petitioned the Supreme Court for cert under an extraordinary provision that would allow its case to bypass the lower courts and be heard with the Tam case, but was denied. Furthermore, Barber worries, if the provision is struck down, it could clear the way for the registration not only of racially disparaging marks, but of parodies of famous marks. On the other hand, Morgan argues that allowing the provision to remain in place would overrule the Court's own precedent in the Citizens United case.

"One sign of how divisive this is – and there are good arguments on both sides – is that if you look at that, none of the major IP organizations filed amicus briefs," says Barber of the Tam case, adding that INTA was the exception, filing a brief on one, relatively minor, issue of the case. The examination of the case promises a heated debate between Morgan and Barber.

more from across site and ros bottom lb

More from across our site

The Supreme Court, which is hearing two IP cases this week, should limit the power of US courts to rule on foreign sales
Safety standards wouldn’t lose copyright protection when named in law, so long as they were accessible for free online
In-house tech sources say Amgen v Sanofi has the potential to stifle their prosecution and litigation strategies if SCOTUS’s decision is too broad
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
The Federal Circuit said tech firms can challenge the way the USPTO implemented Fintiv, but that won’t mean much for practitioners, say counsel
The England and Wales High Court handed down one of the most hotly anticipated FRAND rulings for some time
Funders discuss different IP portfolio funding options and how they decide whether to offer preferential terms and pricing
The issue of the Unified Patent Court’s third central division needs resolving before IP owners can fully embrace Europe’s new era
Foreign firms and lawyers, including IP practitioners, can now practise in India after years of talk and no action
Most Indian counsel won’t immediately look beyond the Delhi High Court for IP cases, but new forums could potentially change their minds