An en-banc panel of the US Court of Appeals for the Federal Circuit has held that trademarks are expressive speech entitled to First Amendment protection. In In re Tam, the court struck down the “disparagement” clause of the Lanham Act as unconstitutional. The USPTO had refused to register Mr. Tam’s trademark, THE SLANTS, for a band name under the “disparagement” clause of the Lanham Act. The court held that the refusal to register the mark as “disparaging” amounted to viewpoint discrimination which is impermissible under the strict scrutiny review appropriate for government regulation of message or viewpoint.

Unless overturned by the US Supreme Court, this decision provides additional latitude for trademark owners to select a name which they feel best serves their marketing objectives. Registration of a mark on the Principal Register carries with it numerous procedural and substantive legal advantages over reliance on common law rights. The incentives to pursue federal registration – e.g. greater perceived marketplace value and much greater ability to deal with infringement - are usually so significant in absolute terms and relative to their cost as to make federal registration highly desirable for any owner making an informed decision about its trademark rights. Denial of these benefits creates a serious disincentive to adopt a mark the government might deem offensive or disparaging.

The government may not deny “benefits” based on message-based disapproval of private speech that is not part of a governmental speech program. Denial of an otherwise available benefit is unconstitutional at least where, as here, it has a chilling effect on private speech.

Many of these same issues are before the court deciding the widely publicized question of whether the Washington Redskins’ trademarks are entitled to First Amendment protection. This case provides some hope that the court will rule in the Redskins’ favor.

Assuming that this decision stands in the Redskins’ case and otherwise, it will be important to observe how the USPTO handles similar applications and how the courts address efforts to ‘police’ marks which can be considered disparaging. As this went to press, the USPTO announced a ‘suspension’ of its policy of refusing registration of disparaging marks.