It’s hornbook trademark law that the United States Patent & Trademark Office (USPTO) may deny registration to a trademark deemed “scandalous, immoral or disparaging.” Or is it?
In December, the Federal Circuit turned this bit of settled law on its head by deciding that the USPTO may not refuse to register a trademark that it finds to be disparaging.
The appeal was brought by Simon Tam on behalf of his band, The Slants, whose name was denied registration as a trademark because the USPTO found it to be disparaging. But the appeals court held that there was no legitimate government interest in refusing to register the mark because of the message it conveys (i.e., that it disparages certain groups), and therefore the First Amendment trumps.
But wait? Didn’t the USPTO recently cancel the Washington Redskins trademarks because they were disparaging? Why yes they did. And herein lies the confusion for trademark practitioners moving forward.
The Redskins appeal lies in a different jurisdiction, but unless the US Supreme Court decides to clarify the circuit split, it seems that the USPTO’s cancellation of the Redskins marks may also be reversed thanks to the First Amendment.
You can read the full opinion here.