American Bar Association

The ongoing battle before the United States Supreme Court regarding the ability to register disparaging trademarks, prior details of which can be found in earlier blog posts here, here, and here, is heating up with a recent flurry of amicus brief filings. Earlier this month, the USPTO filed its opening brief in the case involving the rock band The Slants pending before the Supreme Court, urging the Court to uphold section 2(a) of the Lanham Act, the section that bans the registration of disparaging trademarks, and explaining why it believes the ban is not a restriction on free speech. Following that submission, numerous other groups have filed amicus briefs taking various positions on the issue.

The Native Americans who petitioned to cancel the Washington Redskins’ trademark registrations filed an amicus brief in favor of the USPTO’s position and arguing that there is no right under the First Amendment to use a disparaging trademark to silence others. Other Native American organizations also filed an amicus brief asking the Supreme Court to rule in favor of the USPTO and find section 2(a) of the Lanham Act constitutional in light of the government’s incentive to discourage discriminatory conduct. A collection of bar associations filed an amicus brief seeking the same result. The Washington Redskins, on the other hand, are expected to file an amicus brief arguing the opposite–in favor of allowing registration of allegedly disparaging trademarks.

American Bar Association Stamp
Copyright: alzam / 123RF Stock Photo

The American Bar Association (“ABA”) filed a procedurally interesting amicus brief, in which it declined to take a position on whether section 2(a) of the Lanham Act is constitutional and instead focused on a procedural issue. The ABA argued that if the Supreme Court holds that disparaging marks are not registerable (i.e. that section 2(a) is constitutional), it should also hold that such marks are still enforceable under the common law and the federal unfair competition provision of the Lanham Act. The ABA believes that the Federal Circuit’s underlying decision is too vague on this point and that it should be clarified at the Supreme Court level. Were the Supreme Court to follow the ABA’s thinking, the implication may be that trademark users (including The Slants and the Washington Redskins) continue to use disparaging marks but rely upon common law protection or federal unfair competition protection for enforcement purposes.

Other amicus briefs have also been filed with the Supreme Court and can be read on the SCOTUS blog website.  The Slants’ brief is forthcoming, and a decision from the Court is not expected until next year.