On Wednesday the Supreme Court heard oral argument in Lee v. Tam, a case involving the disparagement clause in section 2(a) of the Lanham Act. Essentially the clause precludes the PTO from registering a disparaging mark; whatever that means (the history of what has been registered and what hasn’t leads one to believe the application is somewhat arbitrary).
The Slants are a rock band. It’s memebers are asian-american. In 2011 they filed to have there name registered with the PTO. They were denied registration for the reason that their mark disparages asian-americans. The band argued the name is used to empower asian-americans by reappropriating the slur, and that the disparagement clause is an unconstitutional regulation of speech. That argument has made its way all the way up to the Supreme Court.
It appears the justices have some issue with the clause, but there are concerns for what striking that clause would mean to the entirety of the trademark program. Basically, most of the justices were concerned that removing the disparagement clause would call into question the PTO’s ability to scrutinize trademarks generally.
Counsel for Tam argued that’s not the case, because it would only call into question the PTO’s ability to scrutinize the “speech” portion of the mark. That is, the message within the mark or statement the mark makes, opposed to its function as a source identifier, which is the main point of trademarks and the laws enforcing them. For instance, The Slants identifies a rock band, and the PTO should be able to determine if it’s a distinctive mark in commerce without deciding if the social message also included within the mark is allowed.
For me, that’s a valid, strong argument.
Counsel for the government basically argued that the trademark program is meant to be about commerce and not speech, so the disparagement clause is a perfectly valid form of commercial name regulation. It’s also important to note that denying registration does not preclude use of a “disparaging” mark, it only precludes registration, which offers additional protections and rights. So, the further argument from the government is that it is not stopping The Slants or others from using their marks, the government just isn’t willing to give them additional rights and officially recognize the mark in the register.
It appeared from the dialogue that the justices have a problem with the disparagement clause. The question now is, is there enough of an issue to make a change to 2(a), and if so how much of a change? (There are other parts of the clause that don’t deal in regulating the commercial aspects of a mark.)
Meanwhile, the Redskins’s appeal in the Fourth Circuit is on hold while this all gets figured out. Their registration has been canceled, and they are also challenging the constitutionality of the disparagement clause. Again, this doesn’t keep them from using or enforcing their mark. Other people can’t all the sudden start using it. It does, however, reduce the ease of enforcement, though I can’t see them having any real issues enforcing it.
A decision is likely to be released in June.