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Supreme Court Rules Unconstitutional Disparagement Clause of Lanham Act

Posted on Jun 20, 2017 in Blog

The Supreme Court ruled on June 19, 2017 that the United States Patent and Trademark Office may no longer refuse to register a mark because it is disparaging. The Decision in Matal v Tam No. 15-1293 was unanimous that Section 1052(a) of the Lanham Act was unconstitutional as a violation of the Free Speech Clause. The decision of the Supreme Court affirmed the decision of the United States Court of Appeals for the Federal Circuit which had reversed a decision of the Trademark Trial and Appeal Board (TTAB). The TTAB in In re Tam had affirmed the refusal of an Examining Attorney to register the mark THE SLANTS for a singing group comprised of Asians. The TTAB determined that under Section 2(a) the word SLANTS was a word that disparaged Asians. The Slants case was appealed to the United States Court of Appeals for the Federal Circuit where the decision on disparagement was reversed.  In re Tam 808 F.3d 1321 (Fed. Cir. 2105) (en banc).  The Court found that Section 2(a) of the Lanham Act, which permitted refusal to register disparaging trademarks, was unconstitutional as a violation of the First Amendment of the Constitution.

The decision will in all probability affect the case which is presently pending before the United States Court of Appeals for the Fourth Circuit involving the Washington Redskins’ registered trademarks containing the word REDSKINS (Pro Football, Inc. v Blackhorse No. 15 1874). In this case, a member of the Navajo Nation filed a petition to cancel the registered trademarks of the Washington Redskins on the basis that “redskin” is a pejorative word for a Native American. The TTAB cancelled the Redskins registrations containing the word “redskin(s)”. The decision of the TTAB was affirmed by a District Court.

– by Manny D. Pokotilow

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