Federal Circuit Holds that USPTO Can’t Deny Trademarks as Offensive or DisparagingDecember 23, 2015

On Tuesday, December 22, 2015, the Federal Circuit  held that a portion of § 2(a) of the Lanham Act is unconstitutional in a 10-2 decision. The decision was made in In re Simon Shiao Tam, an appeal from the Trademark Office. Mr. Tam is a member of an Asian American rock band called THE SLANTS. The band applied for a trademark for its name. The Trademark Office rejected Mr. Tam’s application for a trademark based on § 2(a) of the Lanham Act, which states a registration may be refused if it “[c]onsists of or comprises immoral, deceptive, or scandalous matter.”15 U.S.C. § 1052(a). This Section has been the subject of debate and recently gained attention as it was the basis for the cancellation of the Washing Redskins’ trademark registrations.

In a lengthy opinion, the Federal Circuit found that Mr. Tams’ band’s name is private speech entitled to the full scope of protections afforded by the First Amendment. “It is a bedrock principle underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys.”In re Tam, App. No. 14-1203, Slip op., at p. 4 (Dec. 22, 2015 Fed. Cir.). Based on this the Court concluded, “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 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.”Id. at p. 4.

The full opinion can be read here.