On December 22, 2015, the United States Court of Appeals for the Federal Circuit struck down a provision of the federal Lanham Act which prohibited the registration of “disparaging” trademarks by the United States Patent and Trademark Office (“USPTO”). Specifically, the Court found parts of Section 2(a) of the Lanham Act unconstitutional. That section bars registration of trademarks that “[c]onsist of or compromise immoral, deceptive, or scandalous matter; or 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.” The Court held that “the disparagement provision of § 2(a) is unconstitutional because it violates the First Amendment.”

Why is the Refusal to Register Disparaging Trademarks Unconstitutional?

Disparaging Trademarks Ban Violates First Amendment

The facts of the underlying case are straight-forward. Mr. Simon Shiao Tam is the “front man” for an Asian-American dance-rock band named “The Slants.” Mr. Tam named his band The Slants to “reclaim” and “take ownership” of Asian stereotypes. Nevertheless, pursuant to Section 2(a) of the Lanham Act, the USPTO refused to register the mark.

The Court began its decision by noting:

“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 Court was particularly troubled by the USPTO’s inconsistent enforcement of the provision. For example, the Court noted that the USPTO refused to register the trademark HAVE YOU HEARD SATAN IS A REPUBLICAN, but did register the trademark THE DEVIL IS A DEMOCRAT. The Court also noted that the USPTO allowed registration of the trademark SQUAW VALLEY for one particular product, but not for another. The Court used these and other similar examples to demonstrate that the government’s selection of what is or is not offensive violated the First Amendment. Accordingly, the USPTO can no longer deny trademark registration simply because the proposed mark may disparage certain groups or individuals.

Protect Yourself

The ruling by the Federal Circuit will likely be appealed by the USPTO to the Supreme Court of the United States. Nevertheless, unless and until an order is issued enjoining the ruling of the Federal Circuit, the USPTO will no longer be able to deny trademark registrations simply based on the message conveyed.