Why it matters: On December 22, 2015, the Federal Circuit sitting en banc held in In re Simon Shiao Tam that Section 2(a) of the Lanham Act, which bars the U.S. Patent and Trademark Office (PTO) from registering "scandalous, immoral, or disparaging remarks," is an unconstitutional restriction on free speech. It remains to be seen whether the Federal Circuit's decision will help the Washington Redskins in the football team's long-standing lawsuit involving six Redskins marks, which were cancelled under Section 2(a) in July 2015 by a Virginia federal court (affirming a TTAB ruling), that is now before the Fourth Circuit on appeal.

Detailed discussion: On December 22, 2015, in the case of In re Simon Shiao Tam, an en banc panel of the Federal Circuit held that Section 2(a) of the Lanham Act, which bars the PTO from registering "scandalous, immoral, or disparaging remarks," is an unconstitutional restriction on free speech.

The Federal Circuit case involved an individual by the name of Simon Shiao Tam (Tam), the "front man" for a dance-rock band, attempting to register the trademark The Slants (the band's proposed name) with the PTO in 2011. Tam's stated reason in the trademark application for wanting to name his band The Slants was "to 'reclaim' and 'take ownership' of Asian stereotypes." Citing Section 2(a) of the Lanham Act, the examiner refused to register the mark because he found it "disparaging to people of Asian descent" and felt that "a substantial composite" of Asians would find the mark offensive. The TTAB affirmed, disqualifying the mark for registration under Section 2(a) because, among other things, " '[t]he dictionary definitions, reference works and all other evidence unanimously categorize the word 'slant,' when meaning a person of Asian descent, as disparaging,' and because there was record evidence of individuals and groups in the Asian community objecting to Mr. Tam's use of the word." Tam then appealed the TTAB's ruling to the Federal Circuit.

In the first go-round before the Federal Circuit, the Court found the mark The Slants to be disparaging and affirmed the TTAB's disqualification of the mark from registration. The Court also held that Federal Circuit precedent foreclosed Tam from raising a First Amendment challenge to Section 2(a) because, even though the PTO would not register the mark The Slants, nothing was stopping Tam from using the name or the mark for his band, and thus the First Amendment was not implicated. The Federal Circuit then sua sponte ordered rehearing en banc and asked the parties to brief the following issue: "Does the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate the First Amendment?" In addition to the parties' briefs, ten amicus briefs were filed, and the en banc panel (Panel) heard oral argument on October 2, 2015.

The Panel began its opinion by agreeing up front that it finds the mark The Slants to be disparaging and likely to cause offense. After considerable analysis, however, the Panel held that "[t]he 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." The Panel thus vacated the TTAB's ruling and remanded the case back to the TTAB for further proceedings.

It remains to be seen whether the Panel's opinion will have an impact on the long-running litigation involving the six Redskins marks, the latest iteration of which was appealed to the Fourth Circuit in October 2015. In July 2015, an Eastern District of Virginia judge in the case of Pro-Football, Inc. v. Blackhorse upheld the TTAB's ruling cancelling the registrations of six Redskins trademarks on the grounds that they disparage Native Americans in contravention of Section 2(a) of the Lanham Act. The judge rejected the football team's arguments that Section 2(a) violates the First Amendment, basing his decision on two lines of reasoning that were later disavowed by the Federal Circuit Panel in Tam, namely that (i) the First Amendment is not implicated by the operation of Section 2(a) and (ii) federal trademark registration constitutes government speech and is thus exempt from First Amendment scrutiny. In support of his "government speech" finding, the judge cited to the 2015 U.S. Supreme Court case ofWalker v. Texas Division, Sons of Confederate Veterans, involving the rejection by the Texas DMV of a specialty license plate featuring a confederate flag design (in rejecting the specialty plate, the DMV relied on language in its state-run program that the DMV could reject any proposed specialty plate it found to be "offensive to any member of the public"). In that case, the Supreme Court reversed a Fifth Circuit decision and held that license plates are a form of government speech that is exempted from the First Amendment and thus can be subjected to content restrictions by the government (interesting to note here that the Federal Circuit Panel inTam differentiated Walker, finding that federal trademark registration is not the same as a state-run specialty license plate program and is therefore not government speech).

We will be watching to see how the Fourth Circuit rules in the Blackhorsecase. Depending on the outcome, it is quite possible that a circuit split will result and the matter will be before the Supreme Court to decide.

See here to read the 12/22/15 opinion of the Federal Circuit sitting en banc in In re Simon Shiao Tam.

See here to read the 7/8/15 Eastern District of Virginia opinion in Pro-Football, Inc. v. Amanda Blackhorse et al.