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IP Alert UPDATE: Supreme Court to Consider First Amendment Challenge of Federal Government’s Ban on Offensive Trademarks

October 3, 2016

UPDATE: This morning the U.S. Supreme Court denied Pro-Football's petition for certiorari before judgment. This means Pro-Football, Inc. v. Amanda Blackhorse, the trademark dispute involving the Washington Redskins, will not be heard alongside Lee v. Tam, which had been accepted for review by the high court last Thursday.

Please see our alert below from September 30 for background:

Today the U.S. Supreme Court granted a writ of certiorari in the trademark case Lee v. Tam. The case involves The Slants, a rock band that was denied a trademark registration on its name by the U.S. Patent and Trademark Office (USPTO) on the grounds that the name was offensive to Asians and so was not registrable under the Lanham Act. The Court will consider whether Section 2(a) of the Lanham Act, which bars the USPTO from registering “scandalous, immoral, or disparaging marks,” is facially invalid under the Free Speech Clause of the First Amendment.

In December 2015, in an en banc decision in In re Tam, the Federal Circuit sustained a First Amendment challenge to Section 2(a), holding it to be unconstitutional as a violation of the First Amendment. (Background on the case can be found here.) In April, the USPTO appealed the Federal Circuit ruling to the Supreme Court.

This case addresses the same First Amendment issue as does Pro-Football, Inc. v. Amanda Blackhorse, which involves trademark registrations held by the Washington Redskins. In July 2015 the Virginia district court ruled against the Redskins in the trademark dispute over their controversial name, affirming that the USPTO had the ability to cancel the federal registration of six team trademarks because they were “disparaging to Native Americans” at the time they were registered. Pro-Football subsequently appealed to the Fourth Circuit. Although its appeal is still pending, Pro-Football has asked the Supreme Court to hear its case early, as a companion to Lee v. Tam. The Court did not rule today on this petition.

Fitch Even attorneys are monitoring the progress of Lee v. Tam and will report once the Supreme Court has issued its decision early next year.

 

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