SCOTUS TO DECIDE IF DISPARAGING NAMES CAN BE FEDERALLY REGISTERED TRADEMARKS

DEAD KENNEDYS.  SEX PISTOLS.  PUSSY RIOT.  Band names are sometimes offensive.  They also can be service marks governed by the federal Trademark Act and state trademark acts.  On January 18th, the US Supreme Court heard oral argument on whether the disparagement provision of the Trademark Act, which provides that no trademark shall be registered which “consists of…matter which may disparage…persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” is facially invalid under the Free Speech Clause of the First Amendment.

The responding party, Simon Tam, is the founder of an all-Asian American rock band called THE SLANTS, who has stated that the band intends to reclaim the word “SLANTS,” much as the gay community has embraced the word “queer.”

The dispute started when the US Patent and Trademark Office refused registration of THE SLANTS as a service mark for a musical group.  Mr. Tam appealed the decision to the Federal Circuit Court of Appeals, which sided with Mr. Tam, reasoning that while some trademarks “convey hurtful speech that harms members of oft-stigmatized communities,” the First Amendment “protects even hurtful speech.” 

Recent Supreme Court decisions also have liberally protected offensive speech, including protests at military funerals, depictions of animal cruelty and lies about military achievements.  But, federal registration of a service mark is all that is at issue in this case, so even if SCOTUS upholds the Trademark Office’s decision denying registration, THE SLANTS are free to continue using their name. This could prove to be a decisive nuance under a free speech analysis.

Ironically, THE SLANTS in 2011 were added to the US Armed Forces Entertainment Roster and invited to perform for active duty troops overseas.  So regardless of whether THE SLANTS can attain federal trademark registration of their mark, at least one government agency has embraced the band and its name; and all the publicity around this case can’t be hurting their booking calendar.

HW Wins Ninth Circuit Appeal in a Trademark Case

We are delighted to share with you that the Ninth Circuit Court of Appeals has affirmed the decision we obtained on behalf of our client E. & J. Gallo Winery that the trademark EL GALLO for an energy drink infringes the Winery’s exclusive rights in the GALLO trademark.  HW partner Steven Weinberg and senior associate Michael Salvatore represented Gallo in the trial court and on the appeal.

HW Named to Best Law Firms 2017

We are delighted to share that HW has for the 5th year in a row been named to Best Law Firms in American by US News and World Report.   From the “Best Law Firms” Press Release: 

Firms included in the 2017 “Best Law Firms” list are recognized for professional excellence with persistently impressive ratings from clients and peers. Achieving a tiered ranking signals a unique combination of quality law practice and breadth of legal expertise. “U.S. News is the global authority in rankings,” says Tim Smart, executive editor of U.S. News & World Report. “Evaluating law firms is a natural extension of what we do best.” The 2017 rankings are based on the highest number of participating firms and the highest number of client ballots on record. To be eligible for a ranking, a firm must have a lawyer listed in The Best Lawyers in America, which recognizes the top 4 percent of practicing attorneys in the U.S. Over 10,000 attorneys provided more than 800,000 law firm assessments, and over 10,000 clients provided more than 90,000 evaluations.

HW founder Steven Weinberg was listed in Best Lawyers in America for the fifth year in a row.