Eye Opening Decision: Federal Circuit Finds THE SLANTS Mark Disparaging But Registrable

On December 22, 2015, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a landmark decision holding the federal prohibition on registration of "disparaging" trademarks unconstitutional and in conflict with the First Amendment. In re Tam, No. 2014-1203 (Fed. Cir.). While the number of marks that are refused on this "disparagement" basis is limited, In re Tam could have significant implications for the long-running dispute regarding the REDSKINS mark, and also provides a useful discussion on the regulation of trademarks as expressive, rather than commercial, speech.

Since enacting the Lanham Act in 1946, the U.S. Patent and Trademark Office (USPTO) has been required to deny federal registration to marks that consist of or comprise "matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute." Lanham Act §2(a), 15 U.S.C. § 1052(a). The CAFC notes that this "disparagement" clause stands out from the other prohibitions contained in Section 2(a), such as prohibiting the registration of marks that falsely suggest a connection with an individual, because it does not advance one of the two related goals of the Lanham Act: (1) protecting the public from source confusion and (2) ensuring that a trademark owner can protect its investment from misappropriation.

In In re Tam, Applicant Mr. Simon Shiao Tam was denied registration of the mark THE SLANTS in connection with musical entertainment services on the ground that the mark is disparaging to people of Asian descent, despite the fact that Mr. Tam's adoption and use of the mark is intended to make a statement about racial and cultural issues. While acknowledging that the "disparagement" test was correctly applied, the CAFC overturned the nearly 35-year old case In re McGinley, 660 F.2d 481, 484 (C.C.P.A. 1981) holding that Lanham § 2(a) does not implicate the First Amendment.

Judge Moore's majority opinion champions the right to free speech guaranteed by the First Amendment, noting that "[i]t is a bedrock principle underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys." The CAFC found it "beyond dispute" that application of the "disparagement" clause is discrimination on the basis of content. Because trademarks are private, expressive speech, the clause could be justified only if the...