In December of 2015 the en banc U.S. Court of Appeals for the Federal Circuit struck down a 70-year-old provision of the Lanham Act that denies registrations for “disparaging” trademarks. The appeal was filed by Simon Shiao Tam who tried to trademark his Asian-American rock band, the Slants, but the United States Patent and Trademark Office (USPTO) rejected his request on the ground that the band name disparages Asians. The Federal Circuit ruled that the ban on disparaging trademarks violated the First Amendment and constituted viewpoint discrimination.
Last week, the Supreme Court of the United States agreed to hear the dispute over the band’s name. However, the Supreme Court denied to hear a similar case involving the Washington Redskins, at the same time. Last year, the USPTO canceled the Redskins’ trademarks, finding that they were disparaging to Native Americans. Both the Slants and the Redskins argue that it is unconstitutional for the government to deny trademark rights for offensive speech.
Even without trademark protection both groups can still use their respective names. However, trademark registration provides multiple legal benefits, including the right to sue in federal court and the entitlement to certain statutory damages in the case of counterfeiting.
The Supreme Court will hear the band’s argument early next year.
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