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Big First Amendment Trademark News: The Slants Win on Appeal

A very important first amendment trademark ruling came down today in the Court of Appeals for the Federal Circuit (which is a U.S. Federal court) involving the restriction on immoral, scandalous, and disparaging trademarks.

Here are two previous blog posts where I discussed the “immoral, scandalous, and disparaging” issue: in 2012 and 2014.

The Slants Case

Let’s start where today’s court opinion begins: “Section 2(a) of the Lanham Act bars the Patent and Trademark Office (“PTO”) from registering scandalous, immoral, or disparaging marks.” The Lanham Act is the federal law that governs trademarks. You can read the whole court opinion here.

Following this rule, the U.S. Patent and Trademark Office (USPTO) has had a policy of not registering trademarks that they determine to be scandalous, immoral, or disparaging. If you’re asking, “But who says what’s scandalous, immoral, or disparaging,” you’re on to something.

Today’s case was about a rock band named The Slants. The band is made up of Asian-Americans. The word “slant” is often considered a slur against Asians and people of Asian descent.

Simon Shiao Tam, the leader of the band, applied to register their name as a trademark; the USPTO refused on the grounds that the word is disparaging and therefore not eligible for trademark registration. Tam, along with his legal counsel, appealed the matter to federal court.

In April 2015, a 3-judge panel of the Federal Circuit Court upheld the USPTO’s ruling and refused to order the USPTO to register the trademark. Tam appealed again.

Today, the full Federal Circuit Court ruled that the Lanham Act’s bar on registration of disparaging trademarks is in violation of the First Amendment and therefore unconstitutional. This is a very big deal.

The USPTO’s only option at this point would be to appeal the matter to the U.S. Supreme Court; it’s not clear that they would take the case. If not, the Federal Circuit ruling will stand.

Let’s Talk About Free Speech

Today’s court opinion states that:

Mr. Tam named his band The Slants to “reclaim” and “take ownership” of Asian stereotypes…The band “feel[s] strongly that Asians should be proud of their cultural heri[ta]ge, and not be offended by stereotypical descriptions.”…With their lyrics, performances, and band name, Mr. Tam and his band weigh in on cultural and political discussions about race and society that are within the heartland of speech protected by the First Amendment.

Here’s the key takeaway from today’s ruling:

The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks. It cannot refuse to register marks because it concludes that such marks will be disparaging to others. The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of § 2(a) is unconstitutional. Because the government has offered no legitimate interests justifying § 2(a), we conclude that it would also be unconstitutional under the intermediate scrutiny traditionally applied to regulation of the commercial aspects of speech. We therefore vacate the…holding that Mr. Tam’s mark is unregistrable…

So, in effect, the court ruled that Congress (who created the Lanham Act) cannot impose this kind of speech restriction.

Now, it’s important to note that The Slants were a particularly appealing plaintiff. They clearly were not trying to use this word as a weapon against people of Asian descent. Nonetheless, this ruling will conceivably apply to any use of disparaging words. If a white-only group wishes to register as a trademark a phrase that includes a slur against African-Americans, the USPTO will not be able to refuse on the grounds that the mark disparages that group.

This ruling may also affect the ongoing battle over the Washington Redskins trademark.

However, if the USPTO wants to continue to refuse to register marks on similar grounds, it still has options, as today’s opinion was restricted to “disparaging” marks. The court did not address the restrictions on “immoral” or “scandalous” marks. That’s a fight for another day.

Nonetheless, I view today’s ruling as a victory for free speech. Trademarks are an important tool in furthering and incentivizing expressive, political, and commercial speech. The government should not be in the business of restricting the expression of ideas, even ones that some may find offensive.

Congratulations to Mr. Tam and his able legal team.

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