Trademark Protection for Disparaging Names Still in Question

Trademarks are registered by the United States Patent and Trademark Office (called the USPTO) as well as by state trademark offices. A federal trademark registration gives a trademark owner stronger enforcement rights than does a state registration. However, federal law places certain limits on the types of words, phrases, or symbols that may be registered as trademarks.

One limitation is that words that “disparage” people cannot be registered as trademarks. This limitation was recently used to cancel the “Redskins" federal trademark registration that had been owned and used by the Washington NFL franchise for decades. In that case, the “Redskins” trademark was found to disparage Native Americans.

An interesting case raising the same issue has now been presented to United States Supreme Court by a rock band called the “Slants.” The band’s application for trademark registration was refused by the USPTO which found that the word was disparaging to people of Asian descent. The band filed suit in federal court and argued that the USPTO’s refusal of their registration under the disparagement rule violated their freedom of speech under the First Amendment to the United States Constitution. The United States Court of Appeals for the Federal Circuit, located in Washington, D.C., agreed and found that the disparagement rule was unconstitutional.

The USPTO has asked the United States Supreme Court to review the decision of the Court of Appeals. The Supreme Court has discretion to review the case, but is not required to do so. The Supreme Court considers only about 150 cases per year out of the thousands of applications for review that are submitted. In an unusual maneuver, the Slants band has filed a brief in support of the USPTO’s request that the Supreme Court review the case—even though the band won the case in the Court of Appeals.

The Supreme Court has not yet decided whether it will review the case. The decision will likely affect the eventual outcome of the Washington Redskins case, as well.