Prohibition Against Disparaging Trademarks Unconstitutional

On December 22, 2015, the Federal Circuit ruled in In re Tam that the Lanham Act's prohibition against disparaging trademarks violates the First Amendment. The case involves an Asian-American band that sought to register its name, "The Slants," despite the term being derogatory towards Asians. The U.S. Patent and Trademark Office (USPTO) rejected the registration on the grounds that it violated Section 2(a) of the Lanham Act, which prohibits the registration of disparaging marks. On appeal, the Federal Circuit upheld the USPTO's rejection, but Judge Kimberly A. Moore suggested that Section 2(a) violates freedom of speech, which ultimately led to an en banc review of the decision.

Bloomberg BNA reached to Finnegan attorney Mark Sommers for his thoughts on the ruling. Sommers believed that the key issue for the court is understanding the expressive content of trademarks. He feels that it is important to acknowledge that some trademarks have more expressive content than others.