Reference no: EM132236296

Simon Tam, the front man for the rock band, The Slants, wanted to register the band’s name with the U.S. Patent and Trademark Office. The examiner denied the registration because of a 70-year-old provision in the Lanham Act (15 U.S.C. §1052) that prohibited the registration of names and marks that are disparaging, “immoral,” or “scandolous.” Mr. Tam appealed the denial, and he had some fairly high-powered amici (friends of the court) on his side, including the Washington Redskins, themselves in a battle of survival for their trademark. Initially, the federal court of appeals for the federal circuit upheld the denial by the U.S. Patent and Trademark office. However, upon rehearing, the court held that the trade name should not have been denied. [In re Tam, 785 F.3d 567 (Fed. Cir. 2015), and In re Tam, 808 F.3d 1321 (Fed. Cir. 2015)] The argument that Mr. Tam made successfully was that the Lanham restriction was a violation of the First Amendment. In a 2-to-1 decision, the court held that “the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others.” The court held that the First Amendment protects speech “even when the speech inflicts great pain.” Some examples of the types of registrations cited by the court as painful but protected included the following: • “Stop the Islamisation of America” • “Mormon Whiskey” • “Khoran” as a name for a wine • “Christian Prostitute” • “Amoshhomo” • “Ride Hard Retard” • “Have you heard that Satan is a Republican?” • “Democrats shouldn’t breed” • “Republicans shouldn’t breed” There are other cases, such as that of the Washington Redskins, pending that have the First Amendment challenge at the heart of their cases. Five Native Americans brought the suit asking for cancelation of the “redskins” name and symbol. [Pro-Football, Inc. v Blackhorse, 112 F. Supp. 3d 439 (E.D. Va. 2015)] The lower court canceled the trademark. The Washington Redskins have appealed. A New York lunch wagon company lost its case against the state of New York for denying it a permit to operate in the state lunch wagon area on the grounds that its company name was offensive. [Wandering Dago, Inc. v Destito, 2016 WL 843374 (N.D. N.Y. 2016)] These conflicts in decisions mean that the U.S. Supreme Court will, at some point, need to review one of the cases to determine the constitutionality of the Lanham Act provisions.

1. Please re-read this section and present your supported thoughts on denying trademark registration of names and marks that are disparaging, immoral, or scandalous. Lanham Act.