A decision in a trademark case last month may have effects on the arguments being made in the U.S. Court of Appeals for the Fourth Circuit on behalf of the Washington Redskins. A sister court of appeals in Washington, D.C. ruled that it is unconstitutional for the U.S. Patent and Trademark Office (PTO) not to register a trademark that it deems disparaging. After this decision, which allows Simon Tam’s Asian dance band, The Slants, to register its name, the PTO can no longer deny disparaging trademarks. Trademark attorney Jonathan Brown spoke to the Buffalo Law Journal about this case and what constitutes a disparaging trademark. The full story is available on the Buffalo Law Journal website.
“Disparaging” may be open to interpretation
The Washington Redskins have been involved in a court dispute since the federal registration of their trademark was revoked in 2014. The Buffalo Law Journal reports that the decision in In re Tam will greatly affect the Redskins’ case. In re Tam also overturns a 70-year-old federal provision of the Lanham Act based on the basis that it violates the First Amendment. Jonathan Brown told the Buffalo Law Journal that the Redskins are making the same argument that the court of appeals did in its In re Tam decision: the government should not regulate the political correctness of a trademark.
“I think both the band and the Redskins have set forth some pretty compelling arguments that there is no bright line rule here,” Mr. Brown said. “What a disparaging mark means is open to a lot of interpretation. What I might consider to be disparaging and you might consider disparaging can be very different, and both parties are saying, ‘Hey, we shouldn’t have some government official making that call.’”
Redskins will still have legal remedies
Although there are benefits to having federal registration, such as having rights to a trademark nationwide, the Buffalo Law Journal reports that the Redskins can still use their trademark even if it is ultimately cancelled in court. Mr. Brown told the Law Journal that the Redskins will still have legal remedies available to them under unfair competition laws even if they do lose their federal registration. Mr. Brown views this case with a different perspective, as he recently handled a trademark issue in China, where the government will not register trademarks that officials deem able to corrupt the welfare of Chinese citizens. He told the Law Journal that he will “be very interested to see how this issue in the U.S. settles out because I do think the law and what is disparaging and not disparaging has been applied unevenly and is subject to a lot of personal interpretation.”
According to the Buffalo Law Journal, Mr. Brown wonders if the provision of the Lanham Act will be thrown out or if there will be a multitude of different decisions that may cloud what it means for a mark to be disparaging. “The Slants case certainly helps the Redskins’ cause, but how that plays out legally we’ll find out,” he said.
About Jonathan W. Brown
Jonathan W. Brown is a senior partner at Lipsitz Green Scime Cambria. He is a member of the firm’s Intellectual Property and Commercial Litigation Practice Areas and focuses his practice on copyright law and trademark registration, privacy and publicity rights, intellectual property litigation, commercial litigation, and employment litigation. Mr. Brown is experienced in handling proceedings before the Trademark Trial and Appeals Board and the U.S. International Trade Commission. He handles matters in both New York and California and manages trademark portfolios for several multimedia and entertainment companies.