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 decide is:
“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.