On Wednesday April 20, 2016, the US Patent and Trademark Office (USPTO) filed a
petition for a writ of certiorari seeking Supreme Court review of the United
States Court of Appeals for the Federal Circuit’s (CAFC) recent decision in
In re Tam 117 USPQ2d 1001 (Fed. Cir. 2016). That was the case that found
the disparagement provision of Lanham Act Section 2(a) unconstitutional as a
violation of the Free Speech Clause of the First Amendment. Section 2(a) of the
Lanham act bars the registration of “scandalous, immoral or disparaging
trademarks.” In the case, the Trademark Trial and Appeal Board (TTAB) denied
registration of the trademark The Slants claiming it was disparaging. The CAFC,
sitting en banc, struck down the TTAB’s decision denying registration for The
Slants and also struck down the entire section of the Lanham Act that bars
"disparaging" trademarks. In the past, the USPTO had used this provision to
refuse the registration of many questionable marks over the years including the
widely reported REDSKINS case decided in 2014.
After the CAFC’s opinion in the In re Tam case, the applicant requested that
the USPTO immediately register its mark. The USPTO said that it would suspend
the registrations of all disparaging trademarks while it was reviewing its
appellate options. By filing the writ, the USPTO has signaled its concern that
the decision may allow for registration of marks that may be potentially
disparaging and new applications for marks previously refused registration based
on Section 2(a), including the noted REDSKINS case.
The question posed in the writ that the Supreme Court is being asked to
“Whether the disparagement provision in 15 U.S.C. 1052(a) is facially invalid
under the Free Speech Clause of the First Amendment”.
We will now wait to see if the Supreme accepts the writ.