Written by Julianna Simon and Jeff van Hoosear

On January 18, 2017, the Supreme Court heard oral arguments regarding whether the Lanham Act’s provision refusing federal trademark registration to disparaging marks is invalid under the Free Speech Clause of the First Amendment.

The issue comes before the Supreme Court after the U.S. Patent and Trademark Office (“USPTO”) refused to issue Simon Tam, a member of a musical band comprised of Asian-Americans, a registration for the name THE SLANTS in connection with “entertainment in the nature of live performances by a musical band.” The USPTO held that the mark THE SLANTS was barred from registration under Section 2(a) of the Lanham Act, which provides that no trademark shall be refused registration on account of its nature unless it “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” 15 U.S.C. 1052(a). Specifically, the USPTO stated that the likely meaning of “THE SLANTS” is “a negative term regarding the shape of the eyes of certain persons of Asian descent” and that the term “refers to ‘persons of Asian descent’ in a disparaging manner because it is an inherently offensive term that has a long history of being used to deride and mock a physical feature of those individuals.”

The band appealed the USPTO’s refusal to register the mark to the United States Court of Appeals for the Federal Circuit. The Federal Circuit held that the refusal to register disparaging marks amounted to unconstitutional viewpoint discrimination contrary to the First Amendment. Specifically, the Court held that the provision was subject to strict scrutiny, which requires the government to show that the provision was passed to further a compelling governmental interest and is narrowly tailored to achieve that interest. The Court found that the provision failed to meet that standard, and that it discriminated against certain content and viewpoints.

The pending case is relevant to the fashion industry because the USPTO has been inconsistent in determining whether marks used in connection with clothing are immoral, scandalous, or disparaging. For example, the USPTO issued a registration for the mark FCUK, but refused registration for the mark FUCT (which the applicant argued stood for “Friends You Can’t Trust”), and for clothing. Similarly, the USPTO refused to issue registrations for the marks AWSHIT WORKS, PROTECT THE COOCH!, and I BANGED BETTY in connection with clothing, but issued registrations for HOME OF THE BIGGER BREAST, DON’T BE A BASTARD, and WINE SLUT for clothing.

Pending the Supreme Court decision in the Tam case, the USPTO has suspended prosecution of applications to register marks that it deems immoral, scandalous or disparaging. These applications are currently in a state of limbo. The fashion industry, along with most of the intellectual property legal community, is following the Tam case and awaiting the Supreme Court decision with great interest. The decision will hopefully provide clear guidelines to the USPTO, and eliminate the inconsistent examination of applications for those “edgy” marks favored by many in the fashion industry.