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When we discussed the provision of U.S. trademark law that prohibits the use of “disparaging” words in a registered trademark, we noted that “change may be on the horizon.”

On Dec. 22, 2015, the Court of Appeals for the Federal Circuit ruled that at least the prohibition against registration of “disparaging marks” Section 2(a) of the Lanham Act is an unconstitutional governmental restraint on private speech. That section of the 70-year-old law had allowed the USPTO to refuse registration for trademarks that “disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

The prohibition on “offensive” trademarks has been in the spotlight recently due to the well-publicized controversy over the team name of the National Football League’s Washington Redskins. Native American activists find the “Redskins” name offensive and have lobbied for decades for the team to change its name. They eventually succeeded in bringing the Redskins federal trademark registration before a federal judge, who invalidated the registration on “disparagement” grounds. The team immediately appealed, temporarily preventing cancellation of its federal trademark registration.

The Federal Circuit’s ruling on Dec. 22 in an unrelated case now likely bolsters the NFL franchise’s chances of maintaining trademark protection for the team’s “Redskins” name.

The Redskins and The Slants
The Dec. 22 decision that dealt a Constitutional body blow to the decades-old Lanham Act came not in the Redskins’ case but in the case of an Oregon-based rock band called The Slants. The band, whose members are Asian-American, previously had argued that their use of “Slants” was an intentional effort to co-opt and subvert the offensive meaning of the word sometimes used to denigrate Asian people by referring to their epicanthic eye folds. They argued that this co-opting usage detoured around Section 2(a) concerns.

In the ruling In re Simon Shiao Tam, however, the Federal Circuit was less concerned with whether “The Slants” was or was not “offensive,” than with the question of why a government regulator had the power to give or withhold its stamp of approval on the ideas expressed in a trademark.

“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,” Judge Kimberly A. Moore wrote for the majority of the court. “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 Section 2(a) is unconstitutional.”

‘Private’ vs. ‘Commercial’ Speech

In an opinion that concurred in part and dissented in part, Judge Alan D. Lourie wrote that denying a trademark registration for “The Slants” in no way prevented the band from using the name or from expressing the views its use symbolizes. Lourie compared the USPTO’s willingness to issue a government-protected trademark to a state DMV’s willingness to issue a specialty or “vanity” license plate. In his view, by denying trademark protection, the government is merely signaling its unwillingness to lend its “imprimatur” to any viewpoints contained in the trademark.

“While a trademark alone … is not government speech, once it claims that federally registered status, it becomes more than the private owner’s speech,” Lourie wrote. “It is not simply private speech as is the holding of a placard in a parade.”

Judge Jimmie V. Reyna filed a separate dissent in which he pointed out that trademarks have been held to be “commercial speech” by the U.S. Supreme Court, and as such are more subject to governmental oversight that “advances the government’s substantial interest in the orderly flow of commerce.”

“Put simply, commercial speech does not transform into core political speech with full First Amendment protections simply because it ‘links a product to a current public debate,’” Reyna wrote.

As the Redskins’ case still waits to be heard by the Court of Appeals for the Fourth Circuit, the trademark attorneys of Panitch Schwarze will be watching to see whether and how that ruling concurs with the ruling in the Tam case. If the Fourth Circuit disagrees with the Federal Circuit, the question of whether the USPTO should have the power to decide what is or is not “scandalous, immoral or disparaging” could be headed to the Supreme Court.


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