The trademark world is buzzing today after the Supreme Court ruled that the government can’t refuse registration for trademarks that are considered “offensive.”
The Court ruled that the Asian-American rock band The Slants have the right to federal trademark registration with the U.S. Patent and Trademark Office (USPTO), despite having a “disparaging name.” The Slants’ lead singer, Simon Tam, had filed a lawsuit after the USPTO rejected the band’s trademark registration and subsequent appeal.
This ruling could have a significant impact on other trademark cases – most notably the registration for the Washington “Redskins” of the NFL. The Trademark Office had canceled their trademark registration for “Redskins,” deeming the term to be offensive, but will most likely be prohibited from upholding the cancelation in light of The Slants’ ruling.
In the process of deciding today’s case, which restores power to the makers of trademarks (as opposed to the USPTO) the court also recognized that federal registration is never mandatory for the enforcement of unregistered trademarks in the United States, and that U.S. law has always given strong protection to common law trademarks.
In fact, today’s ruling reinforced this key tenet of U.S. trademark law several times:
“Federal law does not create trademarks.” … Trademarks and their precursors have ancient origins, and trademarks were protected at common law and in equity at the time of the founding of our country.
Trademarks are created through use of a mark, not by registering with the government, and it has been that way since the U.S. was formed.
“Without federal registration, a valid trademark may still be used in commerce … And an unregistered trademark can be enforced against would-be infringers in several ways. Most important, even if a trademark is not federally registered, it may still be enforceable under §43(a) of the Lanham Act, which creates a federal cause of action for trademark infringement.”
Not only can unregistered (common law) trademarks be used legally, but they also can be enforced against potential infringers.
“Section 43(a) allows for a federal suit to protect an unregistered trademark.”
Not only can common law trademarks be enforced – they can be enforced in federal court.
“Unregistered trademarks may also be entitled to protection under other federal statutes, such as the Anticybersquatting Consumer Protection Act, 15 U. S. C.§1125(d) … There is no requirement [in the Anticybersquatting Act] that the protected ‘mark’ be registered: unregistered common law marks are protected by the Act.”
Unregistered marks also hold rights against cybersquatters and can prevail under the Uniform Domain-Name Dispute-Resolution Policy (UDRP).
This just reaffirms the need for companies to create bulletproof records of their common law trademark rights. Time-stamped, immutable records of trademark use can help enforce and protect trademark rights – often a company’s most valuable asset.