On December 22, 2015, in a potentially far-reaching decision, the Federal Circuit Court of Appeals held that Section 2(a) of the Lanham Act, which prohibits registration of disparaging trademarks, is unconstitutional under the First Amendment’s guarantee of free speech. While perhaps the most publicized “disparaging trademark” controversy this year centered around the Washington Redskins, whose trademark registrations were cancelled earlier this year in a decision upheld by a federal district court (the case is currently on appeal to the Fourth Circuit), this case before the Federal Circuit involved Simon Shiao-Tam, who applied to register the name of his band, “The Slants,” for trademark protection.
Though the Portland-based band is comprised of Asian American musicians who had previously stated that the name’s intent was to reclaim the word, the U.S. Patent and Trademark Office (USPTO) refused to register the mark based on Section 2(a)’s prohibition against registration of trademarks that consist of “immoral, deceptive, or scandalous matter; or matter which may disparage…persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” This decision was affirmed by the USPTO’s Trademark Trial and Appeals Board.
Ironically, in the initial appeal of the matter to the Federal Court, neither Tam nor the government focused on the First Amendment argument. At oral argument in the initial appeal in January 2015, Judge Kimberly Ann Moore (who is also a Washington Redskins fan) invited the government’s attorney to discuss the First Amendment issue, which the attorney declined to do. Writing for the majority, Judge Moore affirmed the USPTO’s refusal to register the mark, finding that there was substantial evidence supporting the USPTO’s finding that the term “The Slants” was disparaging and also rejecting Tam’s backup argument that Section 2(a) was a violation of the First Amendment. The Federal Circuit stated that it was bound by precedent, namely a prior 1981 case (In re McGinley) that had held the government’s refusal to register a disparaging mark does not prevent a party from using it (and therefore, there was no First Amendment violation). See the April 2015 opinion In re Tam.
However, in that same decision, in a lengthy section entitled “additional views,” Judge Moore urged the Court to revisit In re McGinley and to reexamine the First Amendment issue. Thereafter, the Court of Appeals decided on its own, and without the request of the government or Mr. Tam, to review the decision en banc before a full panel of judges and ordered briefing on the First Amendment question, leading to this latest decision. Although not binding on the Fourth Circuit Court of Appeals, which will be hearing the Washington Redskins’ appeal next year, the Fourth Circuit could be persuaded to reverse the USPTO’s cancellation of the Redskins’ trademark registrations.
A full copy of the Federal Circuit’s en banc opinion can be accessed here.