The Federal Circuit ruled today that the U.S. Patent and Trademark Office cannot refuse to register trademarks because it disagrees with the message expressed by the mark. Specifically, the ban on registrations of disparaging trademarks, found in § 2(a) of the federal Lanham Act, violates the First Amendment.
The decision issues from a case brought by a band called The Slants after the USPTO denied federal registration of their mark—the band name—as disparaging and offensive to Asian Americans.
The appellate court noted that while such terms may actually “convey hurtful speech that harms members of oft-stigmatized communities,” the First Amendment nonetheless protects “even hurtful speech.”
The Federal Circuit’s decision follows the recent USPTO decision cancelling the federal registrations for the Washington Redskins. A federal district court upheld that decision and the case has been appealed to the Fourth Circuit.
This most recent appellate decision may impact the Fourth District’s decision, or the Circuits will end up “split” in their decisions. If so, the Supreme Court may be forced to hear the issue, at some point, to put to rest competing legal positions and authority.
While many may see the Slants decision as distasteful, it eliminates a subjective factor that the USPTO can use in evaluating whether a mark should register. Otherwise, as social climates evolve, so too would the standards that determine whether a mark is capable of registration. All eyes turn now to the appellate court in the high-profile Redskins case to see whether that court will hold the opposite, or if the Federal Circuit’s decision marks the start of a trend.