U.S Courts Interpret Disparagement Clause in Trademark Infringement Cases

Trademark protection for a word, name, symbol, or the like, is provided by federal law in order to distinguish a particular person’s or company’s goods from those of others. A trademark helps people, manufacturers, and companies identify their goods and services in a competitive global marketplace and to create a brand. Sometimes consumers associate a trademark with a particular company. Many consumers make their purchasing decisions based on a company’s trademark. Nike’s Swoosh and the well-known slogan, Just Do It, the Apple Company’s apple logo, and Google’s colorful logo are all examples of well-known trademarks that are easily identifiable.

Kilgore & Kilgore Protects Trademarks through Trademark Infringement Lawsuits

It is easy to understand why companies and individuals would wish to protect their trademarks. A trademark provides exclusive rights to the trademark owner. Trademark infringement is a violation of those exclusive rights granted to the trademark owner by U.S. law. The intellectual property attorneys at Kilgore & Kilgore can help you protect your trademark. If you have a question about your rights with respect to a trademark, copyright, trade secret, or patent, then click here Contact Kilgore’s Intellectual Property Attorneys.

Trademark Registration

The Lanham Act, enacted in 1946 and codified at 15 U.S.C. §§ 1051 et seq., provides the foundation for current U.S. trademark law. Under the Lanham Act, if a trademark is used in commerce, then it can be placed on the principal register, making it federally registered. Some trademarks are not eligible for the principal register, but can be listed on a different register known as the supplemental register. Federal registration of a trademark provides constructive notice of the registrant’s ownership claim in the trademark. Federal registration also provides prima facie evidence of the validity of the trademark. This officially recognizes the owner’s exclusive rights to use the trademark in commerce or in connection with specified goods or services. In addition, federal registration of a trademark enables the registrant to stop the importation into the U.S. of items with an infringing trademark.

Even if a trademark is not federally registered, it can still be used in commerce and potentially enforced against infringers under section 43(a) of the Lanham Act, other federal statutes such as the Anticybersquatting Consumer Protection Act, or Texas common law.

Under the Lanham Act, certain trademarks are barred from the principal register. For example, a merely “descriptive or deceptively misdescriptive” trademark cannot be registered. Also, trademarks that are so similar to other previously registered trademarks such that confusion would likely be created cannot be registered.

Disparagement Clause in Trademark Infringement Lawsuits

The Lanham Act also contains a disparagement clause, 15 U.S.C. § 1052(a), which has been used by examiners at the U.S. Patent and Trademark Office (PTO) to deny registration of a trademark. This provision prohibits registration of a mark that “may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

In a recent U.S. Supreme Court case decided in June 2017, the Court held that the Lanham Act’s disparagement clause violates the Free Speech Clause of the U.S. Constitution’s First Amendment. The decision in Matal v. Tam was 8-0. Justice Gorsuch did not participate in the case.

In this case, Simon Tam, the lead singer for the dance-rock band The Slants, sought federal trademark registration for the band’s name. The Slants can be a derogatory and offensive term for persons of Asian descent. The members of the band are Asian-Americans who intentionally selected The Slants as the name of their band in order to reclaim the term and to purge it of its derogatory meaning.

Initially, the PTO denied Tam’s application for trademark registration of The Slants under the disparagement clause in the Lanham Act. Tam unsuccessfully appealed to the PTO’s Trademark Trial and Appeal Board. Subsequently, the full U.S. Court of Appeals for the Federal Circuit found the disparagement clause facially unconstitutional under the First Amendment’s Free Speech Clause. The Government appealed, and the U.S. Supreme Court agreed with the Federal Circuit and affirmed that court’s decision.

First Amendment Protection and the Disparagement Clause

Justice Alito wrote the decision for the U.S. Supreme Court. This court found that the disparagement clause in the Lanham Act impermissibly banned speech (i.e., use of the name The Slants in a federally registered trademark) on the basis that it was offensive. The Court reasoned that even hateful, derogatory, and disparaging speech is entitled to First Amendment protection. Thus, according to the Court, the Lanham Act’s disparagement clause violated the Free Speech Clause of the First Amendment.

On their website, The Slants stated that they were “beyond humbled and thrilled to have won this case at the Supreme Court.” The band further stated that “to truly protect the most marginalized members of society, we absolutely must protect and expand the First Amendment.”

As a result of the Tam decision, the five Native Americans who had challenged the Washington Redskins over the NFL team’s trademark registrations recently conceded defeat in a case in the U.S. Court of Appeals for the Fourth Circuit. The Native Americans had relied on the disparagement clause in the Lanham Act to argue that the Redskins’ derogatory trademark registrations should be cancelled.

If you wish to learn more about intellectual property lawsuits, then click here, Dallas Intellectual Property Attorneys. Or, if you wish to speak to an attorney at our firm for a free review of the facts of your case, get the conversation started by clicking here Contact Kilgore’s Intellectual Property Attorneys.

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