In a long-awaited move, the U.S. Court of Appeals for the Federal Circuit is set to consider whether the Lanham Act’s Section 2(a) bar to registration of disparaging marks violates the First Amendment.
On Monday, the Federal Circuit vacated its April 20, 2015 panel opinion in In re Tam, in which it affirmed the USPTO’s refusal to register the mark THE SLANTS under Section 2(a). The mark had been applied for by the leader of an eponymous Asian American dance rock band in connection with “entertainment in the nature of live performances by a musical band.” In affirming the USPTO’s refusal, the Federal Circuit panel pointed to dictionary definitions which “universally characterize the word ‘slant’ as disparaging, offensive, or an ethnic slur when used to refer to a person of Asian descent.” Moreover, the panel held that it was bound by precedent from considering a First Amendment challenge to the constitutionality of Section 2(a).
Simultaneous with the panel’s decision, Judge Kimberly Ann Moore issued 24 pages of “additional views” in which she argued that “[t]he time has come” to reexamine the constitutionality of Section 2(a). According to Judge Moore, trademarks can function as protected commercial speech. By denying federal registration to disparaging marks, Section 2(a) empowers the USPTO to make “a moral judgment based solely and indisputably on the mark’s expressive content.” Yet, in Judge Moore’s view, the government has not demonstrated a substantial interest in barring the registration of disparaging marks. Judge Moore’s opinion dismisses the traditional arguments in favor of Section 2(a)—discouraging the use of offensive marks and insulating the government from being seen as giving its imprimatur to disparaging terms—as insufficient to justify the bar to registration.
In light of Judge Moore’s additional views, the Federal Circuit has sua sponte ordered an en banc rehearing of In re Tam. In their briefs, the parties are to specifically address the following issue: Does the bar to registration of disparaging marks in 15 U.S.C. § 1052(a) violate the First Amendment?
The forthcoming en banc ruling will likely have significant implications for trademark applicants. If the Federal Circuit rules that Section 2(a)’s bar on registration of disparaging marks is unconstitutional, then a door to registration will open for marks like REDSKINS, KHORAN, and SQUAW VALLEY—all of which have been rejected or cancelled under Section 2(a). Moreover, although the en banc rehearing is limited to the issue of disparaging marks, it is likely that the court’s ruling will encompass scandalous and immoral marks as well. Indeed, Judge Moore notes that government “disapproval of the message” is the basis for denying registration of many scandalous marks that are not obscene, including BUBBY TRAP for brassieres and COCK SUCKER for rooster-shaped lollipops.