Wednesday, June 28, 2017

U.S. Supreme Court Holds Trademark Registrations Are Free to Disparage

By: Nicole Meyer (Member, Washington, D.C.)

Justice Alito’s summary opinion announced in Court Monday morning, in what has come to be known as the Slants case (Matel v. Tam, 582 U.S. ___ (June 19, 2017), was short and sweet but the trademark applications we can expect in the near future definitely will not be. The U.S. Supreme Court ruled Monday that the Federal Government’s ban on the registration of disparaging marks violates the First Amendment.  

The lead singer (Simon Tam) of a rock band called “The Slants” applied for federal trademark registration of the band name and, when his application was rejected, he challenged the constitutionality of the Lanham Act’s provision (15 U.S.C. §1052(a), a.k.a., “The Disparagement Clause”) barring registration for marks that “may disparage… persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt, or disrepute.…”. The Disparagement Clause applies to marks that disparage the members of a racial or ethnic group.

Tam contested the denial of his application before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB). When he lost, he appealed his case to an en banc Federal Circuit that found the Disparagement Clause to be unconstitutional under the First Amendment’s Free Speech Clause. The Supreme Court granted certiorari and the Government argued before the high court, in part, that a federal trademark registration constituted government speech, not private speech and, therefore, was not subject to the Free Speech Clause. The Supreme Court disagreed, stating that “[t]he Federal Government does not dream up these marks, and it does not edit marks submitted for registration.” Moreover, the Court’s majority opinion stated, “if the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently.”  

All eight participating justices agreed on the key finding that the Disparagement Clause constitutes “viewpoint discrimination,” a decision that has not only Tam, but also the Washington Redskins organization, ecstatic. The Redskins had six federal registrations revoked in 2014 under the same clause. After losing their fight before the TTAB on a 2-1 decision (with the dissenting opinion by former DW colleague and current Administrative Judge Marc Bergsman), the Redskins current appeal before the U.S. Court of Appeals for the Fourth Circuit has been stayed pending the Supreme Court’s ruling in this case. The decision should now bring a conclusion to that quarter-of-a-century long dispute… and an in-flux of applications for derogatory marks.


Nicole Meyer’s practice covers all aspects of trademark, domain name and copyright law.  She focuses on domestic and foreign trademark counseling and worldwide portfolio management. She works with companies to develop and acquire intellectual property, including clearance and availability counseling, and the strategic acquisition, protection, promotion and enforcement of marks. She enjoys working with clients to develop cost-effective strategies for developing, maintaining and expanding their intellectual property portfolio.  Please contact Nicole in our Washington, D.C. office at 202-659-6924.

Thursday, June 22, 2017


By: David N. Ferrucci

In a decision that is being heralded as a victory for First Amendment freedoms, the United States Supreme Court struck down the so-called disparagement provision of the Lanham Act, 15 U.S.C. §1052(a), on the basis that the law constitutes unlawful viewpoint discrimination.

In Matal v. Tam, 582 U.S. ___ (June 19, 2017), the Supreme Court was asked to determine the constitutionality of a Lanham Act provision prohibiting the registration of any trademarks that "may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute." 15 U.S.C. §1052(a) (hereinafter, "Disparagement Clause" or "Lanham Act’s Disparagement Clause"). 
Tam involved a challenge to the denial of federal registration of the mark "THE SLANTS." Mr. Tam, lead singer of the Asian-American rock band "The Slants," chose the name to "reclaim" the derogatory moniker and to drain its denigrating force as a derogatory term for Asian persons. But when Mr. Tam sought to register the mark, the Patent and Trademark Office ("PTO") denied the application on the basis that it violated the Lanham Act’s Disparagement Clause.
The Federal Circuit found the Lanham Act’s Disparagement Clause unconstitutional. Specifically, it found that the clause constituted unlawful viewpoint discrimination in violation of the First Amendment.
In a 4-4 split decision (recently confirmed Justice Neil Gorsuch was not on the Court when the case was argued), the Justices unanimously agreed with the Federal Circuit that denying registration of a trademark based on the allegation that the mark disparages or offends certain groups, is unlawful viewpoint discrimination. As Justice Alito explained in the Court’s majority opinion (joined by Chief Justice Roberts, Justice Thomas, and Justice Breyer):

Our cases use the term “viewpoint” discrimination in a broad sense, and in that sense, the disparagement clause discriminates on the bases of “viewpoint.” To be sure, the clause evenhandedly prohibits disparagement of all groups. It applies equally to marks that damn Democrats and Republicans, capitalists and socialists, and those arrayed on both sides of every possible issue. It denies registration to any mark that is offensive to a substantial percentage of the members of any group. But in the sense relevant here, that is viewpoint discrimination: Giving offense is a viewpoint.

We have said time and again that the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.

Another aspect of the Court’s opinion that could have far reaching consequences for trademark rights in the commercial context is the Supreme Court’s holding that even if a trademark constitutes commercial speech—a category of speech entitled to lesser First Amendment protections—the speech still cannot be regulated simply on the basis that it offends. Specifically, the majority opinion found that even if the speech is deemed “commercial,” regulation targeting offensive speech fails the commercial speech test promulgated in Central Hudson Gas & Electric Corporation v. Public Service Commission of New York, 447 U.S. 557 (1980). “Under that test, government laws and regulations may significantly restrict [commercial] speech, as long as they also directly advance a substantial government interest that could not be served as well by a more limited restriction.” Sorrell v. IMS Health Inc., 564 U.S. 552, 583 (2011). The Court found that the disparagement provision failed the Central Hudson test because it served no substantial government interest and in any event, could not be narrowly tailored. Specifically, the Court held that protecting particular groups from offensive speech is not a substantial governmental interest:

As we have explained, the idea [that the Government has an interest in preventing speech expressing ideas that offend] strikes at the heart of the First Amendment. Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express the thought that we hate.
Justice Kennedy’s concurrence (joined by Justice Ginsberg, Justice Sotomayor, and Justice Kagan) drove home this point and confirmed a line of thought developed in the Court’s 2011 commercial speech case, Sorrell v. IMS Health Inc., 564 U.S. 552 (2011), that regulations aimed at certain viewpoints are not lawful simply because they purport to regulate commercial speech:

“Commercial speech is no exception,” the Court has explained, to the principle that the First Amendment “requires heightened scrutiny whenever the government creates a regulation of speech because of disagreement with the message it conveys.” Sorrell v. IMS Health Inc., 564 U. S. 552, 566 (2011) (internal quotation marks omitted). Unlike content based discrimination, discrimination based on viewpoint, including a regulation that targets speech for its offensiveness, remains of serious concern in the commercial context. See Bolger v. Youngs Drug Products Corp., 463 U. S. 60-72 (1983).

To the extent trademarks qualify as commercial speech, they are an example of why that term or category does not serve as a blanket exemption from the First Amendment’s requirement of viewpoint neutrality.

The Court’s apparent growing unease with the expansion of the Court’s commercial doctrine to encompass all forms of speech, not just traditional advertisements, is a welcome development for commercial speakers. Far too often courts have used the various commercial speech tests to sweep within its ambit speech otherwise worthy of full First Amendment protection.
Click here for a printable pdf version of this article.

David N. Ferrucci is a member in Dickinson Wright’s Phoenix office. Prior to attending law school, Mr. Ferrucci studied journalism and strategic communication at the University of Missouri, where he wrote his master’s thesis on the Supreme Court’s commercial speech doctrine. He can be reached at 602.889.5337 or

The content is informational only and does not constitute legal or professional advice. We encourage you to consult a Dickinson Wright attorney if you have specific questions or concerns relating to any of the topics covered in here.




Tuesday, June 20, 2017

Barth deRosa and Jon Redway named 2017 Washington, D.C. Super Lawyers

We are pleased to announce and our heartiest congratulations to Barth X. deRosa (Member, Washington, D.C.) and Jonathan Redway (Member, Washington, D.C.) named 2017 Washington, D.C. Super Lawyers! Super Lawyers is a listing of outstanding attorneys from more than 70 practice areas who have attained a high degree of peer recognition and professional achievement.

Barth was named for Intellectual Property for the sixth year in a row, focusing his practice in the areas of business technology, copyrights, intellectual property litigation, and trademarks. Barth has successfully prosecuted over 3,000 trademark applications to registration before the U.S. Patent and Trademark Office, has prosecuted over 345 proceedings before the U.S. Trademark Trial and Appeal Board, and has provided availability reviews and recommendations for over 8,500 trademarks. 

on was named for Intellectual Property Litigation. He is Co-Chair of DW’s Intellectual Property Litigation Team and regularly works with businesses and individuals on cases involving patent and trademark infringement, the seizure of counterfeit goods, misappropriation of trade secrets, copyright infringement, as well as business torts and various regulatory matters. 
Please feel free to contact Barth deRosa in our Washington, D.C. office at 202-408-5955. Jon Redway may also be contacted in our Washington, D.C. office at 202-659-6946.  

Thursday, June 15, 2017

IP Litigation Attorney Highlights John Krieger – Experienced in Extensive IP Litigation

John Krieger is a member in the firm’s Intellectual Property and Entertainment & Sports Departments. He concentrates his practice on intellectual property litigation in both state and federal court; prosecuting and defending clients for claims including trademark infringement, copyright infringement, patent infringement, domain name, and anti-counterfeiting litigation; as well as trade secret misappropriation and unfair competition.  

John has extensive experience litigating cases involving the infringement of intellectual property rights over the Internet, and has successfully shut down websites containing infringing material, secured the transfer of infringing domain names for his clients, and counseled clients in defensive domain name registration strategies to protect their intellectual property in the U.S. and around the world. He has summarily defeated challenges to jurisdiction and obtained numerous preliminary and permanent injunctions against third party infringers.  
John has also litigated matters involving the infringement of trademarks, trade dress and copyrights, as well as counterfeit goods, at international Las Vegas trade shows, including obtaining emergency seizure orders and permanent injunctive relief. He has filed numerous opposition and cancellation proceedings on behalf of clients before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office. Mr. Krieger has sought or defended the full spectrum of remedies including actual, statutory, and punitive damages; temporary restraining order; preliminary injunctions; permanent injunctions; and contempt hearings. 

Learn more about John Krieger and feel free to contact John in our Las Vegas office at 702-550-4439.


Monday, June 12, 2017

John Krieger Gives Presentation at the American Intellectual Property Association (AIPLA) Spring Conference

John Krieger (Member, Las Vegas) was invited to give a presentation at the American Intellectual Property Association (AIPLA) Spring Conference on May 17th, in San Diego, CA.  Jeff’s Trademark/ Copyright session topic was, “A Constant Battle: Trademarks in the Media and Entertainment Industries.” AIPLA was pleased to welcome nearly 500 IP practitioners​ from around the globe. Attendees took part in two and a half days of CLE education, committee meetings, and social events.

Please feel free to contact John Krieger (Member, Las Vegas) at 702-550-4439.

Monday, June 5, 2017

Outstanding News and Congratulations to 5 of DW Attorneys on Being Selected to the 2017 IP Stars!

We are very pleased to announce that the firm has been recognized for its Intellectual Property expertise in Michigan and five attorneys within the firm were named 2017 IP Stars by Managing Intellectual Property.  The firm’s Patent Filing and Prosecution practice received a “Highly Recommended” rating and the Trademark practice received a “Recommended” rating. In addition to the firm’s rankings, Attorneys John S. Artz (Member, Troy), is ranked as an IP Star for Patent and Trademark.  Fred W. Hathaway (Member, Washington, D.C.) is ranked as an IP Star for Trademark.
William H. Honaker (Member, Troy) is ranked as an IP Star for Patent and Trademark.  Daniel D. Quick (Member and Practice Department Manager: Commercial Litigation, Antitrust & Trade Regulation and ADR, Troy) is ranked as an IP Star for Trademark. And Mark Scott (Member, Austin) is ranked as an IP Star in Patent and Trademark.

Outstanding news and congratulations on being selected to the 2017 IP Stars!

John S. Artz is a Member in the firm’s Troy, Mich. office and is ranked as an IP Star for Patent and Trademark. He has been lead counsel for many companies in intellectual property and commercial litigation matters. He is co-chair of the firm’s Intellectual Property Litigation practice and focuses on patent, trade secret, trademark and copyright litigation. He also actively counsels clients on patent and trademark prosecution as well as clearance matters. Mr. Artz is a past president of the Michigan Intellectual Property Law Association and is currently co-chair of the Intellectual Property
Section of the Federal Bar Association for the Eastern District of Michigan.

Fred W. Hathaway is a Member in the firm’s Washington, D.C. office and is ranked as an IP Star for Trademark. His practice is focused on domestic and international trademark counseling, clearance and prosecution, trademark litigation before the TTAB, and trademark and domain name disputes and litigation. He is a member of the American Intellectual Property Association, the American Bar Association’s Intellectual Property Law Section, and the Adjunct Professor Special Interest Group of the International Trademark Association.

William H. Honaker is a Member in the firm’s Troy, Mich. office and is ranked as an IP Star for Patent and Trademark. He has extensive knowledge and expertise in all aspects of patent, trademark, trade secret and copyright matters including litigation in a broad range of technologies/industries. He evaluates patents, trademarks, and copyrights on behalf of clients along with advising clients on the protection of inventions, trademarks and copyrightable subject matter. He is the former Chairman of the State Bar of Michigan’s Intellectual Property Law Section and is a member of the American Intellectual Property Law Association and the International Trademark Association.

Daniel D. Quick is the Practice Department Manager for the firm’s Commercial Litigation, Antitrust & Trade Regulation, and Alternative Dispute Resolution Practice Groups and a Member in the firm’s Troy, Mich. office. He is ranked as an IP Star for Trademark. He served as lead counsel for Universal Music Group and related entities and associated artists in copyright litigation, commercial disputes and defamation actions in several states. He also served as lead counsel in a variety of other copyright, trade secret and patent litigation matters. Mr. Quick is the former chair of the American Bar Association’s Intellectual Property Litigation Committee and is currently the chair of the Intellectual Property Subcommittee of the Commercial & Business Litigation Committee.

Mark Scott is a Member in the firm’s Austin office and is ranked as an IP Star in Patent and Trademark. He focuses his practice in the areas of intellectual property, including patents, copyrights and trademarks. He assists businesses that produce innovative products and services with securing a competitive edge in the marketplace, protecting the fruits of innovation, and monetizing creations. He is a member of the American Intellectual Property Law Association, the Texas Bar Association’s Intellectual Property Section, and the Austin Bar Association.

Managing Intellectual Property’s IP Stars 2017 is the most comprehensive and authoritative guide to leading IP firms and lawyers. Managing Intellectual Property’s researchers in London, New York and Hong Kong collected market information, analyzed it and ranked firms in tiers, based on the feedback received from thousands of practitioners. To learn more, click here

Thursday, June 1, 2017

Dickinson Wright recognized for our practices in Michigan, Arizona, Nevada, and Tennessee

On May 26th, Chambers & Partners released their ChambersUSA 2017 Guide. Dickinson Wright was once again recognized for our practices in Michigan, Arizona, Nevada, and Tennessee. Thirty-five of our attorneys were recognized as “Leaders in their Fields” with an additional four lawyers being noted as “Recognized Practitioners.” This is quite an honor and we congratulate all of our practices and attorneys who were included this year, including for the first time as “Leaders in their Field” for Intellectual Property, John S. Artz and John C. Nishi.

Congratulations to all of our groups and recipients of Chambers designations!