SCOTUS & The Slants 

Trademark Law

On September 29, 2016, the Supreme Court of the United States granted certiorari in the case of Lee v. Tam – the appeal from the CAFC decision in In Re Tam, which struck down the disparagement provision of Section 2(a) of the Lanham Act as violating the First Amendment. The Supreme Court declined to hear the Washington Redskins’ (procedurally unorthodox) appeal as well, despite the football team’s insistence that they were better situated to argue the case.
The two cases present slightly different issues (the Redskins had their previously-registered mark cancelled while The Slants were denied registration at the outset) but are nevertheless linked. Should The Slants prevail and should the disparagement provision be deemed unconstitutional, the result will be a victory for the Redskins as well.
The granting of certiorari reignited debate amongst trademark commentators as to the merits of the case. In observing this, I can discern two primary issues that seem to become blurred as they are debated.
The first issue is the constitutional issue, the legal issue. Does the disparagement provision violate the First Amendment by denying trademark registration to marks which may disparage others? What is the proper legal test or framework to analyze the issue? Are trademarks purely commercial speech? What are the purposes of constricting the protection of commercial speech?
The second issue is the social, cultural, policy issue. Should the government be placing a seal of approval by way of the ® symbol on disparaging marks? What is the intent of the mark owner? What does it mean to reclaim a racial slur? What is the context of the mark? Is it right to name a band after a racial slur? Is it right to use Native Americans and a racial slur as branding for a football team?
It’s my contention that the issues are separate. I firmly believe that the first issue and the questions of constitutionality are all that may be properly considered by the Supreme Court here. However, the second issue should not be ignored. The social impact of words and phrases is an issue that the public should debate and that consumers should consider when deciding whether to attend concerts or football games.
First Amendment cases will almost always concern controversial speech by nature, but the legal and social issues can still be extricated from each other and the answer to one does not necessarily influence the answer to another. The conclusions that the Redskins mark is disparaging to Native Americans and that Section 2(a) is unconstitutional are not in conflict with each other. Should the disparagement provision be upheld, the social issue will continue to be blended with the legal issue in the Patent & Trademark Office. However, for now, the intentions of mark owners ought to be irrelevant in the Supreme Court, but openly discussed by the public.


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