A New Slant on the First Amendment? In an En Banc Decision the Federal Circuit Will Decide Whether the Ban on Registration of “Disparaging Marks” Is Unconstitutional

In In re Tam, an en banc Federal Circuit will decide whether the PTO’s ban on registration of disparaging marks violates the First Amendment.  This decision, involving the registration of the mark “THE SLANTS,” will set the stage for the appeal from Pro-Football, Inc. v. Blackhorse, No. 1:14-cv-1043, 2015 WL 4096277 (E.D. Va. July 8, 2015) involving the mark “REDSKINS.”  The In re Tam decision will focus not on whether the mark “THE SLANTS” is, factually, disparaging, but rather on whether the ban on registration of disparaging marks is constitutional.

Section 2(a) of the Lanham Act (codified as 15 U.S.C. § 1052(a)) states that “no trademark . . . shall be refused registration . . . unless it consists of or comprises . . . matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols[.]”  Appellant Mr. Simon Shiao Tam applied to register the mark “THE SLANTS” in connection with a musical group, but the PTO denied the mark as being disparaging to people of Asian descent, and the TTAB and Federal Circuit affirmed the denial.  In re Tam, 785 F.3d 567 (Fed. Cir. 2015) (vacated).

Judge Moore wrote on behalf of a unanimous panel, which included Judges Lourie and O’Malley, affirming the denial of the registration of “THE SLANTS.”  Judge Moore also wrote an “additional views” opinion questioning whether Federal Circuit precedent was correct in holding that § 2(a) was constitutional.  In particular, Judge Moore questioned the validity of In re McGinley, 660 F.2d (C.C.P.A. 1981), where the Federal Circuit’s predecessor court held that “First Amendment rights would not be abridged by the refusal to register” a mark.  Id. at 484.  Judge Moore noted that the McGinley court’s analysis of the First Amendment was not supported by legal authority, that the case itself and subsequent reliance on it has been widely criticized and that First Amendment jurisprudence, particularly the “unconstitutional conditions” doctrine and protections for commercial speech, have evolved in the thirty years since McGinley was decided.

A week after the panel decision was entered, the Federal Circuit vacated its first decision and ordered en banc rehearing sua sponte.  In re Tam, 600 Fed. Appx. 775 (Fed. Cir. 2015).  The Court strictly limited additional briefing to the narrow issue of whether the ban on registration of disparaging marks violates the First Amendment.

In his en banc briefs, appellant argued that § 2(a) could not stand under First Amendment scrutiny.  Appellant argued that there are substantial benefits to federal trademark registration and the ban on disparaging marks fails to serve the purpose of trademark registration—namely to protect consumers and promote fair competition.  Content-based denials impermissibly create a “chilling effect” on protected speech because § 2(a) unconstitutionally conditions the benefits of trademark registration based on the suitability of the expressive meaning of a mark.  Appellant also argued that § 2(a) is not content-neutral and viewpoint-based, and thus unconstitutional as applied.  For example, Appellant noted that the PTO undertakes examination and approval of the content of certain marks and has allowed “reclaimed” disparaging terms (like “DYKES ON BIKES”) but has denied other disparaging terms that had not yet been “reclaimed.”

The government’s arguments centered on whether § 2(a) implicates a right to speech at all.  The government argued that even if appellant was denied federal trademark registration, this imposes no restriction on what name appellant could choose for his band, how he could market his band, what songs he could play, etc.  And, the government argued, state-based trademark law may provide a means for appellant to protect trademark rights—Lanham Act registration is not necessarily required to prevent others from using a mark.  The government also argued that the doctrine of “unconstitutional conditions” did not apply because rather than create restrictions on a protected activity (the right to free speech), § 2(a) defines eligibility for an optional federal program.  Finally, the government argued that there is a legitimate interest in limiting federal registration to marks that are not disparaging because, among other reasons, the government has a compelling interest in fostering racial tolerance.

The Federal Circuit’s en banc rehearing decision will be closely watched, especially given that an appeal has been filed from the analogous Pro-Football, Inc. v. Blackhorse case.  There, the Eastern District of Virginia upheld the constitutionality of § 2(a), affirming the cancellation of the mark “REDSKINS” because it may disparage Native Americans.  Parties to that case filed amicus curiae briefs in In re Tam, along with other notable parties like the ACLU (supporting appellant Mr. Tam) and the South Asian Bar Association of Washington, D.C./National Asian Pacific American Bar Association/Fred T. Korematsu Center for Law and Equality (supporting the government).

If the en banc Federal Circuit splits, or results in a different outcome from the Fourth Circuit in the upcoming Pro-Football case, this issue will be ripe for Supreme Court review.