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Are “Disparaging’ Trademarks Allowed?

The Lanham Act is a federal statute that governs trademarks, service marks and other forms of unfair competition. Section 2(a) of the act forbids the registration of trademarks that are deemed to be ‘disparaging’. While that would seem to answer the question, recently that provision has come under fire for constitutional reasons. Late last year a federal circuit court concluded that the prohibition of disparaging trademarks is unconstitutional. Currently, the law is in limbo and it is possible that this area of trademark law could change dramatically in the coming years.

In re Simon Shiao Tam

In 2011, an Oregon based musician named Simon Tam filed a trademark application. He wanted to get protection for the name of his band, ‘the slants’.  However, and somewhat unexpectedly for Mr. Tam, the United States Patent and Trademark Office (USPTO) rejected his application on the grounds that the band’s name was disparaging to the Asian American community. Mr. Tam, and his four band mates, all of whom are Asian American, filed a lawsuit contending that the USPTO had erred in its decision and that section 2(a) of the Lanham Act was itself unconstitutional. In 2015, the United States Court of Appeals for the Federal Circuit found in his favor and ruled that the prohibition of disparaging trademarks was indeed a violation of the First Amendment. According to the majority opinion, which was contrasted by sharp dissenting opinions, strict scrutiny was the appropriate standard for this case. Under that standard, the majority found that the ban on the registration of disparaging trademarks amounted to viewpoint discrimination.

The Supreme Court Will Need to Resolve the Issue

Beyond the spirited dissenting opinions, the Tam decision has also created major conflict between different U.S .courts. The issue of disparaging trademarks will almost certainly be headed to the nation’s highest court some in the next two years. There are several different cases which might end up in front of the Supreme Court, Mr. Tam’s case is one of them, but there is also the much higher profile case of Pro-Football v. Blackhorse. That case, which is currently pending before the fourth circuit, involves the NFL’s Washington franchise and their use of the team name ‘Redskins’. In 2015, a federal judge used section 2(a) of the Lanham Act to cancel the team’s ‘Redskins’ trademark on the grounds that it is disparaging towards Native Americans. The ‘Redskins case’ is likely to draw major national attention as it proceeds through the court system. It is possible that either case could spell the end of the prohibition on disparaging trademarks.

Need Legal Assistance?

If you have any questions about trademark law in Florida, the attorneys at Pike & Lustig, LLP will help. Our team has extensive experience handling all types of trademark issues. We always put our clients needs first and will work hard to find the cost effective solutions needed to help you and your business. You can reach our office at 561-291-8298, initial legal consultation are free of charge.

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