Lanham Act “Non-disparagement” Rule Unconstitutional, says Federal Circuit

Attorney, The Creekmore Law Firm PC


Over the holiday break the United States Court of Appeals for the Federal Circuit, a specialized appellate court with jurisdiction over certain intellectual property matters, issued a significant ruling concerning the criteria that the United States Patent and Trademark Office (USPTO) may use to decide whether to issue a federal trademark registration.  The Lanham Act–the federal law authorizing the issuance of nationwide federal trademarks–excludes from registration eligibility any mark which is “disparaging” to a person or group of people. Many legal experts have wondered how a law that, by its express terms, calls on the government to discriminate based on the viewpoint expressed by a private person can withstand constitutional scrutiny under the First Amendment’s free speech clause.  The Federal Circuit has now ruled that it cannot, holding that the “disparagement” clause requiring denial of a trademark registration is unconstitutional.

The case, In re Simon Shao Tam (court opinion here), concerns the application for trademark registration for the mark “The Slants” with the USPTO.  “The Slants” is the name of an Asian-American band, and the band contends that it adopted the moniker to “own” the racially derogatory connotations of the phrase (more here from ArsTechnica).  The USPTO, applying the Lanham Act criteria, determined that the phrase was “disparaging” and thereby refused to grant a trademark.  The Federal Circuit–rightly, in my view–determined that such a viewpoint discriminatory assessment by the government violated the free speech clause of the First Amendment.  Applying well-established law on free speech, the Court reasoned that the trademark registration system is a limited public forum to which the First Amendment applies. The USPTO argued that trademark registration was government speech, or that a lack of registration doesn’t actually discriminate against speech, since a claimant can still rely on common law rights.  These arguments, however, downplayed the obvious creative, brand nature of registered trademarks, and the clear advantages federally registered marks hold in court. Therefore, the Court reversed.

This case will have major implications for the Washington Redskins trademark case (previous discussion here and here), currently before the United States Court of Appeals for the Fourth Circuit.

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